An Overview of the USPTO Count System

Dr. Naira Simmons has published a nice short article titled: Putting Yourself in the Shoes of a Patent Examiner: Overview of the United States Patent and Trademark Office (USPTO) Patent Examiner Production (Count) System, 17. J. Marshall Rev. Intell. Prop. L. 32 (2017).

The goal of this note is to provide an overview of the system in which Patent Examiners operate by summarizing important aspects of the system currently used to evaluate the performance of a Patent Examiner.

Many patent attorneys know this system, but the article does a nice job of summarizing how it all works.

143 thoughts on “An Overview of the USPTO Count System

  1. The huge number of comments on this topic include some unreasonable expectations. What anon and some others seem to expect from the PTO is the equivalent of a more than $20,000. IPR petitioner prior art search in each of the 600,000 or so applications per year, instead of the few hundred dollar applicants pay the PTO for searching. That is, with the taxpayers paying for almost all of that rather than any clients, or a huge increase in application fees. Run that 600,000 times $20,000. cost figure on your calculator. It is not going to happen because very few applicants are willing to pay that and neither is Congress.
    [This is not to suggest that PTO quality reviews could not better directed to the importance of prior art search quality.]

    1. Your reply is nothing more than a fallacy Paul.

      That is, with the taxpayers paying for almost all of that rather than any clients

      Where do the taxpayers join in on this?
      Where have I ever indicated that taxpayers need to do the examination?

      You post nothing but FUD.

      You should be ashamed of yourself.

  2. But that’s not what happens in too many cases. What happens is the examiner can’t find the evidence and instead of indicating the claims allowable just makes up nonsense to reject the claims because the examiner knows that there are zero consequences, and in fact only benefits, to rejecting every claim even when the rejections are improper.

    Do you have any evidence for this statement?

    Lets say someone else did a search for an invention and found a perfect 102. Then they handed me the application and the reference. It is still “easier” (in terms of time, difficulty and reward) for me to write an allowance than a rejection. It will take me less time to write the allowance and I will get more credit.

    There are only two reasons an examiner would reject something without evidence – he is being told to by his superior or he has it in for you in particular. The latter is extremely unlikely, because you have to be a real piece before the examiner decides he’s going to essentially work for free (or spend more time working) just to stick it to you.

    If you get a rejection it is either because a junior examiner is being told by his primary that the primary knows the art is out there, but the junior cannot find it, or its because the examiner honestly believes it reads upon your invention. Now it may be that he commits error in that belief, but it is an honest belief.

    Let me make an analogy for you – You’re a criminal prosecutor. Imagine the cops hand you some evidence, maybe its great evidence, maybe its bad evidence. Your options are 1) try and make a plea deal, 2) try the case and 3) simply let the guy go. There’s no world where 3 isn’t always the easiest option. There’s only two things logically stopping you from picking option 3 every time – your boss might get mad, and you kinda took an oath that you were going to resolve these things properly. You never *want* to try the case from a work standpoint, but you do cause its your job. You especially don’t want to try the case if you have bad evidence or you think you’ll end up doing work for free on this case later.

    Maybe on a rare occassion you decide you have an issue with this particular criminal and you’re really going to to push that case, but you know when you do it you’re shooting yourself in the foot.

    My proposal is to simply acknowledge that some applications require more time for the examiner to gather the relevant evidence in an acceptable amount of time than other applications.

    That’s certainly the case, but I am skeptical you can apriori quantify that time. Barring that ability, I don’t see a problem what an average. It’s not like a timer ticks down and after 31.6 hrs someone comes in and tells me “pencils down” picks up your application and ships it out the door. I’m capable of managing my time and going over on some cases and going under on others.

    Maybe the time is too little (on average) for some fields. But more likely what it is is that the examiner advanced to a GS level (thus decreasing his particular average for the field) that is actually above his skill. Most likely it is that you’re dealing with a junior who has a SPE that insists something is known but because hes a supervisor doesn’t search it himself.

    1. Do i have any evidence? Yeah. Three filing cabinet drawers full. Stop by some time and i will share some with you.

      1. I was about to say lol, such evidence stacks to the moon.

        Really though what it is is where the signatory in question has only a half grasp on administrative procedural requirements and evidenciary burdens, finding of facts etc. etc. all mixed in with their timidity (either in their personality or instilled in them from above allegedly in some instances).

    2. “Do you have any evidence for this statement?”

      If you haven’t had to write a rejection for some signatory using a reference(s) that wasn’t even close to being evidence for the fact you’re finding as supposedly known in the prior art (or a motivation that makes halfway sense) as of x date then you’re one in 8000 examiners.

      It’s rumored this kind of nonsense happens a dozen times a day per examiner in the compooter arts and similarly in biz methods. I don’t doubt those rumors. The abstract notions that are being claimed in those cases create problems with claim construction, fact finding, etc. etc. that blend into nonsense happening.

      1. The abstract notions that are being claimed in those cases create problems with claim construction, fact finding, etc. etc. that blend into nonsense happening.

        Ding ding ding!

        And this has been going for decades. What formal steps has the PTO taken to change this? None. What steps will ever be taken? None.

        And we all know why.

        Just pull the plug already. This sh t stinks to high heaven and the entire enterprise has been turned into a farce.

    3. The bigger problem that is not handled well is assigning the cases to the right examiner. The best prosecution comes from the examiner knowing the art and prior art to apply to the application.

      1. I have seen NO systematic way of any such “assigning to the right examiner.”

        1. That’s the whole thing anon. They are not getting the big things right. Not assigning cases to the right examiners. Not giving more money for better searches.

          Just those two things would vastly improve patent quality.

      2. One reason is that examiners in art units that have short backlogs can get transferred to a different art unit with a greater case backlog in which they have no experience.

        1. If all that you are doing is managing “time” and counting widgets, that is all that you will get.

          Not only does this expose the fallacy that removing “logic arts” would free up the examining corp, it also highlights the fact that metrics of the job are NOT THE JOB.

          If quality examination is indeed what is desired, the current path certainly won’t get us there (and neither will Malcolm’s feelings about not protecting the single most beneficial source of innovation today – a source that is NOT beholding to some ultra rich mechanism like bio molecules – funny how he has never dealt with that dichotomy).

  3. Two points: 1) the fact that the PTO doesn’t give examiners more time when we pay for extra claims indicates the system is broken; and, 2) the easiest way to improve patent quality is to improve searches.

    1. MM’s point below isn’t reality. First, you can’t continue prosecution forever. There is a 20 year time line. Second, you have to narrow or change the claims often to continue prosecution. Third, examiners continue to get counts for rejecting the application.

      The fact is that by the time you are in the second RCE that an examiner knows the art and it is little work for them to continue to reject an application. And, your client keeps paying.

      1. Another point to remember is that the “universe” from which the applicant operate from is a closed and limited one since from the point in time of the initial filing, no new matter may be added.

      2. More than that, MM’s hypothetical is absurd. There is no client that “wants to pay.”

        If an examiner wants to “end the case” she has two options: 1. Cite good art and make a coherent argument or 1: Issue a Notice of Allowance.

        No one pays for an RCE if there is a good rejection in front of them. There is no purpose to it.

        1. No one pays for an RCE if there is a good rejection in front of them.

          Really? Isn’t that the most appropriate time to file an RCE?

          If it’s a bad rejection, you should be appealing, not feeding the beast by filing an RCE.

          1. Point taken. I meant good as compared to the invention, not good compared to claim language that could be improved.

            As long as I am making clarifications, I see now that the hypothetical was quoted by MM, so that attribution was a mistake.

        2. “No one pays for an RCE if there is a good rejection in front of them. There is no purpose to it.”

          Usually my applicants pay for the RCE and amend their claims though there was a good rejection in front of them.

          1. An applicant’s attorney will also file an RCE even though “there is a good rejection in front of them” if they do not get the necessary approval from their client to abandon the application in time. That is sometimes a real problem among the nearly 50% of all U.S. applications that have a foreign owner and foreign patent firm in the communication loop with the U.S. firm.
            But also a client may want to keep the application pending with an RCE or continuation for a good reason even if it looks like it will have to be abandoned later or reduced to “picture claims.” E.g., for “patent pending” scare value, PR value, product program funding, etc.

            1. Yeah I mean I don’t mind or whatev. I esp understand there are complexities with doing any sort of business, esp gov business overseas (from their foreign country).

              Very few of my apps go abandoned. Like 1%.

      3. ” and it is little work for them to continue to reject an application”

        Sometimes. Depending on if your application is an ez one or if it is a technically complex, legally complex nightmare potentially with some slight new search being required.

        1. And more work for examiners if the applicant substitutes very different claims in the RCE. Which is not unusual for applications filed with no pre-filing prior art search and no clue as to what the claims would need to include to overcome the prior art.

          1. Yes indeed. Gotta check em all for WD support (including all the scope of all the new language they chose to use, negative limitations and all). It can get very complicated at RCE or any amendment time.

          2. The “more work” is only marginally true, given the fact that no new matter is involved.

            A proper examination to begin with – one that does more than just key word search based on claims – would have ALREADY read and understood the specification and thus would only involve marginal effort with a switch in claims at RCE.

            1. “The “more work” is only marginally true, given the fact that no new matter is involved.”

              You still have to look it over for new matter and stuff. It can get very complicated in some cases anon.

              1. 6,

                As we have discussed in the past, this happens after you have already “read and understood” the application.

                Often, these types of gripes come from examiners who have not bothered to do what they are supposed to do and have only done some “claim key word searching.”

                Sorry – but I have no pity for such.

                1. “this happens after you have already “read and understood” the application.”

                  You seem to think that the reading and understanding carries over for years on end. That’s not necessarily the case.

                  “Often, these types of gripes come from examiners who have not bothered to do what they are supposed to do and have only done some “claim key word searching.””

                  Probably true. But let’s be honest, that’s the official search guideline now so I mean, you can pity them somewhat. Most everyday people couldn’t do more than a word search in the time alotted anyway. You have to be supar skilled to be able to go through the huge amounts of info if you go beyond the ol word search.

            2. “A proper examination to begin with – one that does more than just key word search based on claims – would have ALREADY read and understood the specification and thus would only involve marginal effort with a switch in claims at RCE.”

              And you think that all of that is magically remembered 6 months down the line? Lulz.

              And you think that every little detail magically stands out as being super important in every case? Lulz.

              Anon you’re a utopianist re ta rd.

              “A PROPER examination” *raises pinky finger* lulz.

              1. magically remembered 6 months down the line?

                No magic required. Sure, there may be some effort, but I am not saying that there is zero effort.

                Read my post above.

                1. Effort?

                  I can’t recall when “effort” affected my memory. Either you remember something or you don’t. Sure, sometimes a helpful note to yourself can be helpful, but you’re wanting all of a thousand things to be “noted” for every application. That’s not realistic.

  4. RG If you have a lawyer who wants to argue and an applicant that wants to pay, it doesn’t matter how much the examiner wants to end the case, there’s no mechanism for him to do it.

    The fact that neither the PTO or Congress has done anything to fix this gaping hole in the system is a travesty.

    It’s 2017. We know what vast amounts of money and an unbending desire to create chaos can accomplish when the system is plainly laid open (or worse, designed) for mischief.

    Fix it.

    1. Fix it.

      A cynical person would tell you that the best mechanism the office could do to solve this issue without changing their procedure would be to allow the case but make an unmistakably clear error of law so that the issued patent could be taken down on de novo review in a court of law, to which there is a termination of appeal at some point.

      If only there was some sort of legal issue the office was not fully exploring/prosecuting that would allow for a large number of applications to be taken off their docket, would temporarily make the applicants very happy and the office very rich, yet ultimately wouldn’t be subject to a clear and convincing standard of review by the public so that it could be cheaply invalidated…

      1. Your “fix” sounds quite to be criminal – as you want to duck out of doing your job to “get it off your plate” yet sabotage what you “approve” so that it is an instant fail at enforcement time.

        Dante has a special circle for the likes of you.

        1. Your “fix” sounds quite to be criminal – as you want to duck out of doing your job to “get it off your plate” yet sabotage what you “approve” so that it is an instant fail at enforcement time.

          You clearly didn’t pick up what I was putting down. I wasn’t talking about myself, I was talking about the office. I was pointing out that the office doesn’t really examine Alice rejections as it should, it requires an examiner to analogize the case to a currently decided case.

          A lot on this board are happy that the office applies the Alice abstractions so narrowly. I believe you yourself applaud this.

          I’m simply noticing that its rather…convenient for the office that its chosen narrow application of 101 allows it to 1) move along its docket by not making rejections that would otherwise be argued over; 2) creates satisfied “customers”; 3) gets increased maintenance fees; 4) creates the appearance that you’re doing more and more work every year and 5) avoids being the bad guy by shoving the issue onto the public and the federal circuit to handle.

          Imagine if we had to analogize our 103s to decided 103 cases rather than draw our own conclusions. It too would similarly lead to vastly more allowances, happier patentees and more fees, but the clear and convincing standard would make the office’s failure intolerable.

          A cynical person would note that the office just happened to make a policy choice which happened to benefit itself, pushed the negatives onto third parties, and has the very people who should be holding them to account for poor quality clapping in approval. Very lucky for them their unbiased policy choice for how to deal with Alice happened to work out for them like that.

          1. I was pointing out that the office doesn’t really examine Alice rejections as it should, it requires an examiner to analogize the case to a currently decided case.

            A lot on this board are happy that the office applies the Alice abstractions so narrowly. I believe you yourself applaud this.

            How very odd of you Random.

            First – I applaud nothing related to the abomination of the “Alice” test.

            Second – your statement, as phrased with applauding something “so narrowly” accompanied with your feeling of “properness” (“as it should”) is NOT something that anyone should take as actually applying the law properly.

            I think your views on the entirety of patent law, from 103 and 112 intermingled with 101 are some of the most ill-informed views around.

            Further, that you want to mix in the “clear and convincing” standard as some type of “denigration” also shows that you just don’t get the Quid Pro Quo and property aspects which form the reason we have a patent system in the first place.

            Third – your statement to which I responded was MORE THAN merely “what the Office is doing,” as you are the one doing the indications exactly as to what I noted: a ‘pass-the-buck’ BUT sabotage the ‘approval.’

            This has NOTHING to do with the Office “not being the bad guy” – as if the “bad guy” was even appropriate. “Work[ing] out for them like that” entirely misses the point – BOTH that such is NOT “working out,” AND that YOU are suggesting “so that it could be cheaply invalidated…” which runs counter to that very notion of property and why we have a patent system.

      2. Examiners get all sorts of extra time to search, even when theyve botched prosecution. For example, an examiner gets more search time if they lose a pre-appeal amd reopen prosecution. They also get more time to search if they decided unilaterally not to file a reply brief.

        It’s abuse of process to let an examiner start over after an applicant has been successful at traversing rejections in a pre-appeal or prior to forwarding to the board.

        I have a matter that has had 5 non-final actions. Two losses in pre-appeal for the examiner, and yet again the decision has been to reopen prosecution. Such poor prosecution that not a single RCE has been filed yet, but it’s cost my client dearly to have to traverse poorly reasoned rejections.

        1. You are wrong. Examiners receive no extra time for losing a preappeal and receive no extra time to rewrite an action 5 times. You are not informed as to how the system actually works. The examiner does not want to rewrite the action 5 times; in fact, he or she would be using voluntary overtime (unpaid) to do so and probably would prefer to allow it. So why would an examiner continue to reopen prosecution and send out actions? To stay employed. If the person signing the case (i.e. person with signatory authority) says it is not allowable, and yet the examiner can’t find art that the person signing the case says exists then the examiner is stuck. The junior examiner must create a rejection out of the best art that exists and send it out. The hope is that at some point the junior examiner will get someone with signatory authority to allow the case. All this extra work is done for free by the junior examiner; they receive zero time.

          1. So why would an examiner continue to reopen prosecution and send out actions? To stay employed…

            …then the examiner is stuck.

            THAT is why you have POPA.

            Your moniker is more than a bit ironic in that you supposedly have this knowledge that you indicate Bluto to be missing, and yet whine about how powerless you are to NOT DO THE RIGHT THING.

            On top of all that – you too make the mistake of confusing the metric of your job with what your job actually is.

            1. “THAT is why you have POPA.”

              Um spoiler bruh, I’ve been looking into the inner workings of POPA and they’re complicit in such system.

              Plus, I’m not sure that technically would be part of why we have POPA. POPA just deals with the overall working conditions as a matter of general bargaining, one-off cases like that typically aren’t really addressed. They could perhaps bargain for the examiner to get more time, but ultimately the statutory authority is vested in the management/signatories (that get their signatory power from management). POPA has no say in what ultimately happens to any application. If mgmt abuses their power relative to a given application then it falls to still further up the chain mgmt to hold them to account (nearly never happens). This is what JD et al. used to btch about constantly.

              “Your moniker is more than a bit ironic in that you supposedly have this knowledge that you indicate Bluto to be missing, and yet whine about how powerless you are to NOT DO THE RIGHT THING.”

              What is the “right thing”? They’re hired as a non-signatory, (or a primary that is having the spe get involved in their case for whatever reason) to simply write up the OA for the signatory to send out under their authority.

              “On top of all that – you too make the mistake of confusing the metric of your job with what your job actually is.”

              Their job as non-signatory is just to write the OA once the final decision on the disposition of the case is arrived at by the signatory in the case (after the signatory has advised them).

              1. and they’re complicit in such system.

                That is not a spoiler, 6 – that is just a sign that you all need to marshal what is going on in the organization that exists for your benefit.

                POPA just deals with the overall working conditions as a matter of general bargaining,

                If that does not control your work measures – and given how SO many confuse the work measures with the actual job itself – then you all are even more to blame for your own predicament.

                What is the “right thing”?

                Signatory authority does NOT change the object of examination. If you do not know what the right thing is, GET OUT.

                just to write the OA once the final decision on the disposition of the case is arrived at by the signatory

                Decidedly NOT. Unless of course that signatory has done the examination (and everything that must go with a proper examination). You DO NOT get a pass on a “soldier following orders” line of B$. Yes, it might be “uncomfortable” confronting a superior who has merely “sniffed” at something – but technically speaking, you are still a professional and you technically have POPA to back you up for any untowards action from a superior.

                1. “That is not a spoiler, 6 – that is just a sign that you all need to marshal what is going on in the organization that exists for your benefit.”

                  It’s only for some benefits though bruh. It isn’t for the “benefit” of taking away/usurping mgmt’s legislatively granted powaz.

                  “If that does not control your work measures – and given how SO many confuse the work measures with the actual job itself – then you all are even more to blame for your own predicament.”

                  You’re confusing, or at least letting bleed over, legislatively granted mgmt powers/responsibilities (of mgmt) with working conditions. At most popa could get examiner’s more othertime to write the fallacious OA for the signatory. They (popa/non-sigs) cannot usurp mgmts powers. Although yes mgmts powers does “control” working conditions to a large degree. But they get a lot of flexibility.

                  Plus you have to remember, most voting popa members (they have to pay each year to be able to vote for leadership of POPA) are signatories themselves so they have every desire to keep the power in their own signatory hands.

                  Perhaps if the non-signatory examiners had their own small union “against” mgmt/signatories (because really in reality signatories become mgmt writ small when they get their sig) then you might have a point. So long as POPA is filled with primary examiners as the voters (and indeed I think primaries are now the majority of examiners as a whole iirc at least in some TCs) then they will vote to keep their own power. Duh.

                  “Signatory authority does NOT change the object of examination. If you do not know what the right thing is, GET OUT.”

                  The “right thing” changes based on who you are id iot who doesn’t understand “power”. If you’re the low man on the totem pole then the “right thing” is dictated to you by the chief (based on the chief’s views). You are not empowered to oversee your ol boss man/chief (just like you cannot challenge them in open combat for leadership of the AU, which I think should probably be reconsidered lol). In our white cis hetero patriarchy it’s up to the chief’s chief (the director) to oversee the mid-level chiefs and keep them in line. Very little of this happens, as at most companies. They have enough on their plates without constantly pooping/spying on their chiefs under them. Not to mention each TC director has like a gazillion spes it seems like, making effective oversight practically impossible even if it were attempted.

                  You really need to learn about dominance hierarchies. I recommend jordan peterson vids on youtube.

                  “Decidedly NOT”

                  You need to discuss that with the SPEs, TC directors, the ADCs, the commissioner, the undersec, Trump, and the merican people in that order. That’s the heirarchy of “calling the shots on what gets sent out”.

                  Right now, they disagree with you.

                  “You DO NOT get a pass on a “soldier following orders” line of B$. ”

                  Actually explicitly do by agreement/law. The law requires a collective bargaining agreement. The collective bargaining agreement requires the PAP. And the PAP has in the handbook that nothing that the SPE tells us to do can be called as a quality error on our part.

                  So yes. We do. Although your OCPD would never allow you to accept this.

                  “Yes, it might be “uncomfortable” confronting a superior who has merely “sniffed” at something – but technically speaking, you are still a professional and you technically have POPA to back you up for any untowards action from a superior.”

                  Bruh we “confront” them all the time. Lulz. Sometimes it works sometimes it doesn’t (as in the signatory will change their minds). But POPA doesn’t have any say in what gets sent out in an OA re re.

                  You can’t just refuse to write OAs forever, workflow and production measurements kick in and create problems that appear on the surface as not being a problem with the content of the OA but a problem with your “hur dur performance”. Plus, if they’re really not generous they’ll bitch about “insubordination” as a “conduct issue” and write you up/fire you over that.

                  You really don’t get how power works anon.

                2. And the PAP has in the handbook that nothing that the SPE tells us to do can be called as a quality error on our part.

                  Examination Quality….

              2. Anon’s popa trolling should really be ignored. It is even worse than his SAWS conspiracy theory.

                1. Yeah Ben – that’s what I thought – mindless sniping from you.

                  It’s like if YOU close your eyes, then the SAWS debacle never happened….

          2. As a former Examiner, this is exactly the situation I was put in. When the SPE said it was not allowable, I had to cobble s**t together over and over. My allowance rate was less than 10% as result, when other art units typically were in the 40-50% range.

            1. Maybe you can share that evidence with Random…

              (the guy who will make statements without even bothering to check the filewrapper, and yet turns around and wants evidence that practically anyone with any experience would easily accept at face value)

          3. Do you think I, or my client, care about that? People aren’t okay with mediocrity even if you can concoct a reason to explain it away. Examiners should not be allowed to rectify poor searching and examination by allowing to them to conduct additional poor searching and examination. If a loss at the appeal and/or pre-appeal stage occurs, where the result is “reopening” prosecution for the PTO to get another bite at the apple, the applicant should be refunded their appeal fee.

        2. Quite opposite of the canard of “wearing down the Examiner” the fact of the matter is that the asymmetric cost structure – ALL costs borne by applicants – very much creates a wearing down of one particular side.

          The USPTO has the rather one-sided advantage of balancing its budget entirely by virtue of funds from innovators – no matter at all on the quality of actual examination.

          This is another reason why metrics of the job of examination should not be confused with the actual job of examination.

          1. There is nobody stopping inventors for shopping for legal counsel that is paid according to the same standards as a junior examiner. Find someone who will work for free after the first non-final.

            1. Yet again you confuse the metrics of your job with the job itself.

              Just because the Office measures you in a certain way does not make your actual job to be so. It is a fallacy to say that your “first non-final is free.”

              As to ANY comparison with what an attorney charges, feel free to change your job and change the actual agreements in place. Your analogy is a fail on so many different layers.

        3. “Examiners get all sorts of extra time to search, even when theyve botched prosecution. For example, an examiner gets more search time if they lose a pre-appeal amd reopen prosecution. They also get more time to search if they decided unilaterally not to file a reply brief.”

          Not likely. ANY ‘extra time’ is at the SPE’s discretion, and most SPEs are quite tight. I strongly doubt any SPE is rewarding second non-finals with extra time.

        4. Had one similar. Over 6 years the examiner issued four non-finals and three finals, the first two finals were successfully petitioned, a third successful petition overturned an improper holding of abandonment. The applicant filed an appeal brief and prosecution was reopened, so the applicant maintained the appeal – the applicant died while it was still pending.

          1. How many interviews did you initiate over those 6 years?

        5. “For example, an examiner gets more search time if they lose a pre-appeal amd reopen prosecution. ”

          Not to my knowledge. You get no more “counts/credits/time” for reopening.

          “They also get more time to search if they decided unilaterally not to file a reply brief.”

          Again no more time/credit/counts given for that.

          You just mean they can spend more of their own time or steal some from the avg of other cases.

        6. Examiners get all sorts of extra time to search, even when theyve botched prosecution. For example, an examiner gets more search time if they lose a pre-appeal amd reopen prosecution. They also get more time to search if they decided unilaterally not to file a reply brief.

          Neither of these statements are true. You get X number of hours for a case. If they ask for an interview and you grant it yet get an extra 1 hr for the interview. If they ask for a preappeal conference you get 1 hr to do the pre-appeal. Beyond that you do the case. Any additional search is uncompensated time, whether it is losing a pre-appeal conference and reopening or unilaterally deciding not to go forward.

    2. You act as if this a problem, when it is anything but that.

      Not “ending the case” is throwing money at the PTO for basically no work after the initial work.

      You seem to want to imply that the old canard of “wearing down the Examiner” is not a canard.

      I cannot think of anything easier than accepting money and sticking with a well founded examination.

      Your “gaping hole” is just not there.

      Your “travesty” is just not there.

      1. Your “gaping hole” is just not there.

        The inadequate size of your … “imagination” … is well known to everyone, “anon.”

        1. Your “response” says nothing.

          Try again (and try something other than va pid add hominem)

        2. Pardon the Potential (re)Peat:

          Your “response” says nothing.

          Try again (and try something other than va pid add hominem).

    3. This just isn’t reality. First, you can’t continue prosecution forever. There is a 20 year time line. Second, you have to narrow or change the claims often to continue prosecution. Third, examiners continue to get counts for rejecting the application.

      The fact is that by the time you are in the second RCE that an examiner knows the art and it is little work for them to continue to reject an application.

      Reality.

    4. “The fact that neither the PTO or Congress has done anything to fix this gaping hole in the system is a travesty.”

      Something similar to the EPO’s oral proceedings would be a great addition to the USPTO’s procedures. The legal eagles in OPLA and the solicitor’s office should use all that awesome brain power of theirs to find a way to write rules to implement such a procedure that are consistent with section 132(b).

      Of course, the PTO won’t do that because when you consider who is really gaming the system the most, applicants or the PTO, the answer is clear: the PTO is gaming the system more with its endless “appeal, re-open, appeal, re-open, appeal, re-open” shenanigans. Not to mention the well documented shenanigans of “get reversed totally by the Board, ignore the MPEP, and re-open.”

      So yeah, Lemelson and Hyatt are gaming the system. But their shenanigans pale in comparison to the PTO’s.

      1. I agree. (Plus, notice that if it is the PTO’s fault the time is tolled, if it is the applicant’s fault, the time is not tolled).

  5. GUIs should not get the same time as cryptography.

    Neither of these things belongs anywhere near a sane patent system, of course.

    The time spend on this junk could be spent examining a zillion other patents that would provide far greater benefit at lower cost to everyone (by “everyone” I mean the ordinary people who end up paying for the legal fees spent on obtaining, enforcing and defending against pointless junk patents).

    Oh, and by the way: kskkkk0002,,,,0$SSfsi0. <– written in code that I just innovated. S00per d00per deep stuff. Can I haz patent now?

    1. The fallacy of “time spent doing something else”….

      Thank G O D that you don’t control what can be pursued.

      1. Thank G O D that you don’t control what can be pursued.

        Right. That’s in Google’s hands, according to your bff anyway. They just pay me to write here.

        LOL

        1. Your reply is – at best – a non sequitur.

          You really should do something for that cognitive dissonance of yours.

  6. From the introduction: “So, who are our Patent Examiners and how are they promoting the progress of science and the useful arts in a limited amount of time?

    First and foremost, examiners clearly are not the ones doing ANY type of “promoting the progress of science and the useful arts.” The ones doing the promoting are the innovators – not the examiners reviewing what the innovators have submitted to the Office.

    Glibly misusing that phrase practically guarantees that the article is riddled with errors.

    Secondly, there also appears to be a cardinal error of conflating how examiners are measured in their jobs and just WHAT their jobs are.

    “Productivity” focused solely on “pushing widgets through” is neither a focus on “good examination,” nor on how examiners complete what innovators (those who actually promote the progress of science and the useful arts) have paid for.

    Applicants do NOT pay for any type of “measured time.” Applicants do not pay for “expectancy hours.” Examiners may be measured by such, but the letter of the law is that applications will be fully examined under the law – NOT to some “well, the meter ran out and we got ‘this far’ examination.” It is a fallacy to confuse these things.

    An article that seeks to enlighten the public and yet misses on this fundamental aspect is of very questionable use.

    The count system was revised in 1976 and very few changes were made until 2010, when the USPTO worked with the leadership of the Patent Office Professional Association (POPA) to develop and implement a new examiner count system.

    As I have attempted to impress upon 6, examiners need to be more active with POPA to make the measurements of the job more align with what the job actually is. Further – the typical gripes and wanting applicants to step in to ‘champion’ the examiner’s cause is clearly misguided, as there already exists a group whose job that is.

    Quantity is the easiest objective metric to quantitate; and the count system rewards the volume of applications processed by an examiner.

    “Being easy” – especially when it comes to a service role of the government is not – nor should not – be the prime driver.

    Ever.

    In order to ensure that the large volume of newly filed patent applications are examined in a reasonable timeframe, the USPTO has a system for determining the average amount of time an examiner should spend examining a patent application.

    This “sounds” like something that it is not. There is NO true evaluation of an application for THAT application’s level of difficulty and what may take a reasonable (however determined) amount of time for THAT individual application. All that we have here – at best – is a partial de-one-size-widget-fits-all mechanism that widgetizes applications (generically) by class designation, and then “fitted” to whichever examiner receives whatever application by a factor of the examiner’s pay grade scale (something totally unrelated to any actual individual application.

    1. – nor should not –

      should read

      – and should not –

    2. “First and foremost, examiners clearly are not the ones doing ANY type of “promoting the progress of science and the useful arts.” ”

      I think in anon’s universe, the patent clause must read:

      “To help inventors promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

      1. Your suggestion is not necessary as it is redundant with the original Constitutional clause (that clause already says what you want to say that I think it should say).

    3. This “sounds” like something that it is not. There is NO true evaluation of an application for THAT application’s level of difficulty and what may take a reasonable (however determined) amount of time for THAT individual application. All that we have here – at best – is a partial de-one-size-widget-fits-all mechanism that widgetizes applications (generically) by class designation, and then “fitted” to whichever examiner receives whatever application by a factor of the examiner’s pay grade scale (something totally unrelated to any actual individual application.

      This is true.

      For example, I examine in the field of computer networking. Every application I have ever examined (and I have examined applications with a single claim, and those with 84 claims) is granted the same base time for completion – 31.6 hrs.

      That 31.6 hrs then gets modified based on what my GS scale is. A GS-7 gets 31.6/.7 = 45 hrs, while a GS-14 gets 31.6/1.35 = 24hrs.

      The two pieces of logic here are that cases which require more than 31.6hrs will balance out with those that take less than 31.6; and that an examiner that has been with the office long enough to be a higher GS level can understand and search the invention more quickly, which justifies, e.g. cutting the examination time nearly in half.

      I suspect that there is no real way to determine what the average amount is it takes to give a good examination. Rather what likely happens is the office says “We got X number of networking applications last year, we’ll probably get Xish number this year, and we have Y networking examiners. X/Y = the difficulty.” In other words – the amount of time isn’t based on complexity but upon the office wanting to keep pace with the influx of applications. If tomorrow the office were assured it would only get X/2 networking applications over the upcoming year, I have no doubt that the “complexity” of the art would suddenly jump up to 40ish hours and some examiners would be transferred to other areas.

      Similarly, since alice was decided we were certainly given non-examining time for *learning* the alice procedure, but we haven’t increased the amount of examining time at all, which means me theoretically have no time to actually *apply* the alice procedure. Which means every minute your examiner ends up thinking and writing about Alice is time that got taken away from searching, 112 and 103.

      As I have attempted to impress upon 6, examiners need to be more active with POPA to make the measurements of the job more align with what the job actually is. Further – the typical gripes and wanting applicants to step in to ‘champion’ the examiner’s cause is clearly misguided, as there already exists a group whose job that is.

      I think you’re confusing a group which is designed to advance the interests of examiners with what the administration is supposed to do. It’s not POPAs job to tell the administration how to perform the mission of the office.

      My job, as is 6’s, is to make a decision on the patentability of claims within (on average) a certain time frame and without error. The fact that the administration chooses to prioritize a certain speed of examining as opposed to letting quality trump all is a question for the administration, not for the examining core. If you insisted on quality trumping all you’d need a lot more lawyers, which would get most of the examining core fired.

      But as I’ve told you before, most applicants wouldn’t want to give me infinite resources to examine their claims, as it would result in a massive reduction in the amount of issued patents. The vast majority of claims that issue issue because they’re “good enough” and pushing the issue further would not be worth the examiner’s time, not because they actually meet the legal hurdles for allowance.

      1. You are far too mired in the metrics of your job as opposed to what your job is.

      2. RandomGuy,

        Thanks for taking the time to write out a well-thought out post from an examiner’s perspective. I think that there are a lot of people on both sides who think the same way about a lot of the issues involved, but that sometimes gets drowned out by louder voices.

        An examiner’s job is really hard. To some, that’s a feature, not a bug. But making examination more difficult decreases patent quality which has very real downstream effects. Both IPRs and the proliferation of the use of 101 can arguably be seen in some ways as answers to the problem that a lot of patents have been allowed which probably should not have been. If the current system is incentivizing bad outcomes which can have bleed-over reactionary effects, then it doesn’t seem unreasonable to try to make changes that will allow for improved examination quality.

        For example, there is no specific reason why three independent claims and 17 dependent claims must be the standard for examination. It’s an arbitrary number, and a lower number of both would likely make it easier to maintain higher examination quality. There are numerous other changes that could equally help improve examination quality.

        This is where I wish Malcolm (and others) would focus their efforts. There IS a patent quality problem in the software arts. But it’s worth at least trying to address it with improved examination on 102, 103, and 112. If it isn’t possible under the current system, then change the system.

        Lastly, as a random FYI which does not at all take away from the quality of your post, I think your auto-correct kept improperly correcting “examining corps” to “examining core” (it’s pronounced the same – maybe text to speech was messing with you).

        JCD

        1. For example, there is no specific reason why three independent claims and 17 dependent claims must be the standard for examination. It’s an arbitrary number, and a lower number of both would likely make it easier to maintain higher examination quality. There are numerous other changes that could equally help improve examination quality.

          Well the office doesn’t tell you to do that many claims, it just charges you more if you go over, and for some reason everyone wants to max out their claims, which I suppose is understandable. If someone gave me one claim I wouldn’t spend twenty times the amount of effort searching it, so why leave your client’s money on the table?

          This is where I wish Malcolm (and others) would focus their efforts. There IS a patent quality problem in the software arts. But it’s worth at least trying to address it with improved examination on 102, 103, and 112. If it isn’t possible under the current system, then change the system.

          The patent quality problem in the software arts is not reasonably fixable. Computer software is (from my standpoint at least) reasonably simple to search – someone claims functionality, and you search that functional word and all of the things which mean the same thing as the word. A chimp with a computer dictionary/thesaurus could run 103s in the computer realm. If you don’t find it you go into the spec and find out what acts make up the function, then you search them.

          The problem occurs when people get creative with the functional language and provide no support for the functions in their specification. This reduces the 103 issue to a question of whether limitation word A encompasses or is equivalent to or is suggested by reference word B. That’s not really an argument the system is set up to solve, because you’re not talking about things with objective structure, you’re talking about expressions of ideas.

          The solution that was developed was the pointless “number of references” rule that has the effect of saying that B reads on A when it only takes two references, but B doesn’t read on A when it takes five. The idea being that if you’re using five references there’s enough limitations in there that even if you’re wrong on the B/A issue, you’ve limited it to the point where your error is mitigated in the world.

          There is a solution to the problem, of course, which is 112a Written Description and 101 to prevent an applicant from using the functional language of A at all unless it was tied to some concrete, searchable thing. But to apply those you need people who can actually read and understand law and not lay people who you can only afford to give a one hour presentation every six months. But if you hire only lawyers you won’t be able to feasibly examine the patents at all, you’d have an entire generation of technology go by before a patent issued, making the patent worthless. This is a concept apparently beyond the reach of those like anon, who demands an unrealistic level of quality for the amount of money being put into the examination system.

          Once you decide you’re not going to actually limit the outer edges of a claim by generic terminology via the law, it becomes a cat and mouse game of adding additional features unrelated to the main overly-broad generic term, until you require so many references in a 103 or spend so much time that the office decides its better to pay you so you go away.

          To solve the quality issue you’d have to completely change the culture to conform to the actual law that the number of references is simply not relevant in a 103, then you’d have to train them to actually apply 101 and 112 to prevent an overbroad scope from issuing regardless of the state of the prior art. That would so radically change the amount of skill for 101 and 112 and the amount of time spent on 101 and 103s that the entire system would break down.

          My allowance rate is far below the target allowance rate for my tech center (the fact that a target allowance rate even exists is just ridiculous) and my RCE rate is also far above the target RCE rate (which is similarly ridiculous) and yet I know for a fact that my allowance rate is too high and the case record generated too shallow, because I know that if I either had more time or a better quality framework (one based on the law) I’d be able to make valid rejections to claims that I have in fact allowed. There simply is no fix other than to say “We’re going to fire all the engineer examiners and only have engineer/lawyer examiners and adjust our authorizations and culture accordingly.” As long as legal arguments to prevent overly broad generic terms from being used are not being made, you’ll always have dangerously overbroad scopes of intangible things.

          1. >>We’re going to fire all the engineer examiners and only have engineer/lawyer examiners and adjust our authorizations and culture accordingly.”

            The biggest problem with quality is search. Some of the worst examiners I’ve run into were lawyers and some of the best were engineers. Probably, the best examiners are the engineers that learn their art unit and speak English well enough to understand complex arguments.

          2. Why is 37 CFR 1.105 so rarely used? Why not make applicants actually have to explain to you what they know about the art and separate what is new from what is old? When applicants have super long claims that include elements that are clearly conventional, it seems strange to have to spend your time to search for them, when you can try to just get the applicant to identify what is conventional in the claim.

            As an attorney, I think the mentality that you want to claim everything as broadly and generically as possible and put it on examiners to try to establish that you aren’t entitled to that broad of protection is toxic. I think attorneys often tend to focus on pushing the boundaries of the letter of the law without worrying about the spirit of the law, and that this is just another example where it can have negative effects over time.

            It has become accepted that this is the way it should be, and that applicants and attorneys shouldn’t have to say anything about “the invention”, but it doesn’t seem unreasonable to ask an applicant to specifically point to what it is that he considers inventive. I suspect that a lot of time and effort is wasted requiring examiners to search steps and features that an applicant does not believe has any particular importance.

            1. 1.05 requires a tech center director’s approval. There’s only what? Two dozen of them overseeing the entire 8000 examiners. I agree it ought to be at the primary/SPE level of approval which would have them happen all the time, but we don’t want to inconvenience our “customers.” It’s the same reason interview sheets are all generic broad language, if counsels actually had to adopt the ridiculous outcomes of their arguments they wouldn’t make them.

            2. “Why is 37 CFR 1.105 so rarely used?”

              The Office strongly discourages 105 requests. So why annoy management when applicants can just state that the information is not readily available.

          3. Your misunderstanding of 101/103/112 is showing.

            Your statements indicate a callous disregard for your actual job, and a willingness to do a subpar job at what you even consider to be your job.

            Dante has two special circles for you.

          4. Random, the “software” arts do seem to present a continuing 112 problem in many cases that prevents a proper search or any effective examination whatsoever. It is complicated by the gamesmanship prosecutors play by adding commonplace additional features to drive up the number of references, etc.

            If I were director, I would directly address the problem in some fashion, such as requiring industry standard language in claims that corresponds to known structures and procedures and/or if there are no such structures or procedures, by providing definitions in the specification.

            As to the second problem, if it appears that an amendment merely adds routine elements, I would simply refuse their entry on the basis that they violate 112(b).

      3. Thanks Random for spending some time telling us how you see your job.

    4. First and foremost, examiners clearly are not the ones doing ANY type of “promoting the progress of science and the useful arts.” The ones doing the promoting are the innovators – not the examiners reviewing what the innovators have submitted to the Office.

      An inventor does not promote. The congress promotes by making the inventor a deal to share his information, and the PTO is the mechanism by which the sharing occurs. The examiner may not be a promoter (rather he is a verification check on a deal), but neither is the inventor.

      If something has utility it will be made eventually. If it is profitable it will be made sooner. If more research is available it will be made sooner. Congress changes the balance on profitability and research available by opting to secure to the inventor certain rights for a period of time in exchange for disclosure. Congress promotes, through the PTO.

      The inventor is the one “progressing the science.” It ought to be real clear he isn’t the one “promoting.” If the inventor both promoted and progressed the science, you wouldn’t need a statement in the constitution at all, as there would be nothing for the government to do.

      1. I can agree with your counter point.

        Well stated.

        (no snark)

  7. One of the major problems with the count system is that it works against proper FIFO docket management. There is an inherent disincentive for examiners to deal with old long-pending applications with long messy prior prosecutions, rather than taking up newer and easier applications out of order. Lemelson and Hyatt applications provide particularly notorious examples. Clearly, special count credits and/or a special set of examiners are needed for disposals of applications still pending in the examining corps ten or more years from their earliest claimed priority dates.

    1. There is an inherent disincentive for examiners to deal with old long-pending applications with long messy prior prosecutions, rather than taking up newer and easier applications out of order.

      There probably are special rules. I’ve gotten special rules on even normal cases sometimes. The number of ten year old cases is not very large, and the problem is not the count system but the inability of the office to foreclose examination. If you have a lawyer who wants to argue and an applicant that wants to pay, it doesn’t matter how much the examiner wants to end the case, there’s no mechanism for him to do it.

      1. True but avoidable RG. The “special rules”are obviously still being avoided. If old applications were being taken up in true pendency order when those applications are re-filed they would get first and then second action finals so fast that buying delay that way would get very expensive and plural such serial re-filings should lead to prosecution laches or failure to prosecute rejections and/or violations of PTO rules of conduct for filing papers for purposes of delay. I.e., the PTO has the tools, they just need to use them.

        1. I’m not sure I understand…

          If I (as an examiner) don’t like a case and want to delay it, I can delay it about six months from it being on the top of my docket. I can wait 55 days to turn it in (then it will take time in the approval process/mailroom) and then 83 days once the amendment comes back. That’s about six months + applicant’s time + delays in docketing/approval/mailroom. I can’t do this with every case for docket management (timer) reasons, but assuming I was actually working (i.e. doing other cases instead of this one I didn’t want to do) my counts are going to be fine.

          But if I really dislike a single case I can make the timer up in other cases. Once the case RCEs I can (if I choose) delay it even more, because it has to get to the top of the RCE list before the 55 day timer starts to run on it, so if I see it coming I can delay my turn ins of other RCEs before it and add their 55 days to this timer. This will require me to front load an extra first action/regular new case (to make up for the missing RCE) for timer reasons, but then I have an easier back load.

          Maybe (if I get the sense this guy is going to give me a hard time no matter how good a job I do) I bother to intentionally delay someone so I only have to deal with him 1-2 times a year instead of 4, but I have to really bother.

          If I want to speed up a prosecution, I can see a document within a few days of you filing it (usually the same day if you e-file). I can work on it even before it is docketed to me. Then the first day it is docketed to me I can turn it in. I will get counts for that. I may or may not have it factored into my docket management score depending on how many other rces are currently in my docket. If I want to go so far as to specifically contact the docketing people and approval people I could theoretically turn around an amendment and put it back in the mailroom in 2-3 days from an efile, but that would be asking people to do favors for me outside of the usual order of things. In all likelihood it will be processed and dumped to my docket in 1-3 weeks, and I can turn it in that day, which will put it out the door in probably another week.

          I like to check my “rejected” docket daily. Consequently, I have a lot of cases that I actually finish the day after someone files their amendment and I am waiting for processing to put it on my docket. Other examiners don’t check their rejected docket at all, which is fine too, since the case actually isn’t their responsibility yet.

          There’s never any prohibition on doing a case, and you always get the counts you should get, there are only times when doing a case will not impact your docket management timer, which has the effect of hurting your docket management score (since working the untimed case obviously means you’re not working on the timed case and delays that timer, with no corresponding “yay quick turnaround” timer for the case you turned in)

          In either case, there’s almost no reason not to prefer RCEs from a count standpoint. A regular new case is worth maybe 18hrs of credit for me, an amendment is worth 4. A RCE is probably worth 14, but is usually only about as much work as an amendment is, so each RCE is like a free 10 hours for me. Even if you don’t like your art on a RCE, you certainly aren’t starting over from scratch, so it’s not like the loss of those 4 hrs puts you at a disadvantage.

          Long story short, I’m not sure I understand – if I want to prevent you from “buying delay” (as if I care) by doing quick turnarounds I definitely can, and to the extent that it slightly hurts me to do so, the pain is in the docket management score, not the count score. But again we’re talking about a few day difference in a 55 or 83 day timer, so it’s not all that much. If a case doesn’t get turned around its because I’m choosing not to turn it around – I either have other work or I’m procrastinating searching the new limitations or I am thinking of responses to your argument. Are you suggesting that perhaps the RCE timer work like the amendment timer, where the timer is longer but it ticks on all cases individually and simultaneously rather than a single timer for the oldest one? What is the inherent disencentive for dealing with older cases? I mean, there’s an inherent disencentive for dealing with jerks, and the fact that the case is still pending after 10 years certainly suggests that’s happening, but on a usual case I love me my RCEs. A RCE is way way down at the bottom of the difficulty list.

          1. So much focus on “worth to you” is part of the problem with the conflation between the metric of the job and the job itself.

            1. RG, an applicant that wants to delay prosecution [so as to be able to add claims covering improvements, or later products of others after seeing those products] is not restricted to plural RCEs. Serial continuations, CIPs, and delayed-filing divisionals are also available, and used, and the PTO obviously does not have a fully effective true-pendency FIFO enforcement system for those.
              Furthermore, applicants like Hyatt have managed to keep applications pending for many, many, years without even having to so re-file.

              1. Ah well that’s true, but then your complaint is with the office allowing extensions of time to six months or with there not being a RCE max. I bet a RCE max would drive people crazy, but if you were to cut it to a max of four months it would serve the same purpose for most people.

                You can’t stop the Hyatts of the world without special rules. Beyond them, most delays are essentially agreed upon – the applicant keeps waiting till the final day to file and the examiner keeps waiting till the final day to respond.

                1. The Office has the power to limit the number of RCE’s an applicant may file for an individual application. So why don’t they?

  8. “the USPTO has a system for determining the average amount of time an examiner should spend examining a patent application.”

    Incorrect off the bat. It isn’t a system for determining the avg time an examiner “SHOULD” spend. It is a system that has a declared amount of time that the avg examiner DID spend in the 1970’s. Plus an hour or two from the change under Kappos and the new count system being implemented.

    This is a system against which examiners are judged against examiners of the distant past, wholly without regard to how much time they “SHOULD” spend. Trying to get management personnel, from the SPE to directors to even feel like they’re at all obliged to not break the individual examiner’s time budget on their behalf is a battle that all must constantly wage. Which is somewhat odd, because not doing so technically makes their own jobs easier and for the life of me I cannot understand why people constantly fail to understand the time budget. I actually feel like there should be a class wholly dedicated to just the time budget, managing time, and how management personnel abidging the time budget as well as the individual examiner abiding the time budget helps everyone involved and certainly helps the office.

    In either event, to fundamentally misunderstand the difference is a gigantic problem with the article just to start off with.

    “Furthermore, the production goal also considers the Technology Complexity of
    each application.”

    Not really. Sort of maybe a teensy bit. Rather it considers the technology complexity of the art in the 1970’s.

    1. Everything you say is true.

      Every application should have its own unique disposal time. It would be relatively simple to figure that time, given the amount of data the PTO has on 1) the length of the applications in each class/subclass, 2) the number of references, and their length, that need to be searched, 3) the number of references on average submitted in IDS’s in each class/subclass, 4) etc.

      An “algorithm” for determining each application’s unique disposal time could easily be written. Would it be perfect? Would it get it right every time? No. A application can be 5 pages long and present very difficult issues. But it would be a more equitable system than the current count system.

      And I’ve said it before and I’ll say it again: charging extra claim fees on the grounds that “more claims require more examining resources” and then collecting those fees and not giving applicants or examiners what was paid for (i.e. “more examining resources” i.e. time) is criminal. And the criminals running the PTO have been getting away with it for what, 30, 40 years.

      UFB

      1. “Every application should have its own unique disposal time. It would be relatively simple to figure that time, given the amount of data the PTO has on 1) the length of the applications in each class/subclass, 2) the number of references, and their length, that need to be searched, 3) the number of references on average submitted in IDS’s in each class/subclass, 4) etc.”

        It’s not a bad idea, but for it to be effective you need proper baselines for each subclass. And correct baselines on their own would carry much of the weight to correcting the system. The Office is currently working on this problem, and I expect a result which mirrors the efforts and effects of the EPQI.

        “And I’ve said it before and I’ll say it again: charging extra claim fees on the grounds that “more claims require more examining resources” and then collecting those fees and not giving applicants or examiners what was paid for (i.e. “more examining resources” i.e. time) is criminal.”

        I suspect everyone without ‘commissioner’ in their job title agrees.

        1. ” The Office is currently working on this problem, and I expect a result which mirrors the efforts and effects of the EPQI.”

          In like 3 years. And it’ll probably be some unweildy administrative beast to even apply or understand. All that when a relatively simple one would probably do fine.

    2. “Sort of maybe a teensy bit. Rather it considers the technology complexity of the art in the 1970’s.”

      Thks really is not fair. There are significant relative differences in how much time is given. Basically anything computers gets twice the time of fishing lures. The problem is the resolution is poor. GUIs should not get the same time as cryptography.

    3. Eh. Both you and AAA JJ assume that the goal is to come to the “correct” conclusion and thus the amount of time you “should” spend is dependent upon the particular scopes being claimed.

      The goal, as in all possible disputes (and this is a dispute, it’s a competition between an inventor and the public both seeking to control the same thing) is to resolve the dispute in a manner that both sides feel satisfied they were fairly heard in an efficient manner.

      The amount of time the office “should” spend is the point at which the marginal utility of further study of this application decreases below the marginal utility of making the rest of the applicants wait. If you think that just because you’ve been given a database and some technical expertise that you can come to the ‘correct’ conclusion in 25hrs as opposed to 20 (so you “should” be given the extra five hours), you vastly overestimate your abilities. A court doesn’t find a claim valid, it simply finds it not-invalid, because even they recognize you can run a months long trial with multiple experts and not be sure about the validity of claims.

      Spend the amount of time you have to search the claim, then make a determination about whether you write a rejection or an allowance based on what you have, then write the document. It’s not rocket science. Some of us will come closer to being correct more often than others. That’s swell. None of us will ever certainly be correct. All we can do is issue rejections that are not further prosecuted or allowances to a field you can’t possibly complete a full search of.

      1. “The amount of time the office “should” spend is the point at which the marginal utility of further study of this application decreases below the marginal utility of making the rest of the applicants wait. ”

        From an administrative standpoint you might be right. But I’m not sure that the administrative standpoint should trump all here.

        “It’s not rocket science.”

        So long as you have a good spe/signatory. If you don’t it becomes a mind reading game that’s more complex than most rocket science.

        “Some of us will come closer to being correct more often than others. That’s swell. None of us will ever certainly be correct. All we can do is issue rejections that are not further prosecuted or allowances to a field you can’t possibly complete a full search of.”

        ^And that’s why you’re a good signatory. Some signatories think they’re going to be right every time, and only whatever popped immediately in their minds is always “correct”. And further, any deviation from such, no matter how small, or how legally complex/uncertain, is the worst. thing. Evar.

        1. So long as you have a good spe/signatory. If you don’t it becomes a mind reading game that’s more complex than most rocket science.

          If you have a bad SPE there’s no amount of change to the count system that will make you have a good day.

          1. This. I’m boggled at how many stories I get from other Examiners along the lines of “My SPE doesn’t understand the art, so he keeps telling me to find things that aren’t there, and won’t let me allow.” I think that there are quite a few people who aren’t confident in themselves enough to sign a case, and would rather err on the side of NEVER allowing anything unless it has like 2 pages of limitations. Which, for the record, is stupid, since I’ve examined cases with 2 page claims that were just full of superfluous words and phrases and could have been written as 3 or 4 line claims, and were easily rejected.

            1. This.

              Is.
              Why.
              You.
              Have.
              POPA.

              Part of doing your job is having the spine to DO your job.

              (Your being based on the Royal You – and perhaps not you personally).

              1. Anon thinks popa is some sort of magic that makes bad management/supervision all better.

                It doesn’t brosefulous. Arguably it just made it worse by getting the count system implemented.

                1. POPA remains YOUR organization, 6.

                  You keep on wanting to NOT recognize that and still want to throw up your hands with an attitude of “what can I do?” – sorry that does NOT fly.

                2. POPA can’t really do much about bad management t ar d. No union ever practically does. They just try to minimize it’s impact on the workers (“protections” for the workers). They would need authority to do so, and if they have authority then they’re just other members of management.

                3. It is not a statement of fact – it is your opinion as to why POPA is not effective in being your organization.

                  MY statements have been statements of fact: POPA IS (still) your organization.

                  That you (the Royal You) don’t know (or care) enough as to how to use it to take care of the constant whining about “I don’t have enough time” is a YOU problem.

                  Don’t make that internal mechanism into a problem for me and my clients.

            2. “I think that there are quite a few people who aren’t confident in themselves enough to sign a case,”

              That’s actually what it boils down to. SPEs/signatories with low amounts of confidence (sometimes they’re outright timid), which in turn causes them to become “negative managers” or “workplace bullies” as the term of art is used.

              One way to combat this would be a better focus on teaching signatories that their decisions are to be strictly bound by the record before them as created by the search already done, and that if they want something else found then they either need to find it themselves, or state in clear terms where additional searching is to be done. And then make consequences for failing to do exactly that procedure (they don’t even have to be harsh). Fact is, most spes actually want to do the “right thing”, but they’re not steeped enough in the whole “prosecution on the record” thing, thinking that their magical thinking is supposed to precede the principle of prosecution on the record (which is to be done simply as a matter of administration if nothing else).

              Worst part about this situation is that this one of a hundred things that already is sort of technically already “policy” but it just isn’t enforced, and lots of people don’t understand it.

                1. Again 6, no magic involved.

                  But you DO have to take some responsibility and understand that POPA is still your organization.

                  If it cannot do these very basic things, then we do you all have it around still?

                2. Right it’s all muh responsibility to do all of mgmts jobs fer them lol. And POPA is how I’m supposed to do it.

                  I really think the guy up above might be right and you’re just trolling as what you’re saying is so asinine as to beggar belief.

                3. “If it cannot do these very basic things, then we do you all have it around still?”

                  It actually does a lot of work behind the scenes regarding grievances and workplace related everyday nonsense that you wouldn’t think about. But statutorily it sticks around because (I think it’s a half) over half of the workers consent/accept it as their collective bargaining organization. Most do this without even thinking about it much until they’re primaries, at which time POPA’s current regime is beneficial to them.

                4. Most do this without even thinking about it much

                  That’s exactly the problem that I am trying to draw your attention to.

                  But hey, you would rather dicker in the weeds and accuse me of not understanding power.

                5. “That’s exactly the problem that I am trying to draw your attention to.”

                  Ahhhh, that’s the “problem” eh?

                  Lol so I’m to infer from your pointing this out as “the problem” that your solution to mgmt/signatories fcking up OAs is for me to rally all the troops that aren’t signatories (maybe less than half of all examiners now) and get popa to totally not magically negotiate for them the ability to overrule/”stand up to” indefinitely mgmt/signatory’s authority? Or perhaps get myself elected to all of popas open negotiating positions/offices (or at least prez). And/or get popa “taken out” as the collective bargaining organization so that everyone has to negotiate 1001 things about their workplace in an over-complicated bureaucracy themselves?

                  This is your proposal?

                  Try to be specific as to what your proposed “solution” is rather than just pointing out problems that I already know about re re.

                6. What are YOU doing about these problems that “you already know about”…?

                  I mean, besides throwing up your hands and going “o well”

                7. “What are YOU doing about these problems that “you already know about”…?

                  I mean, besides throwing up your hands and going “o well””

                  Well brosef I’m not sure that there is all that much I can do except 1. have correctly IDed the problem (or at least having put forth what I think the problem is), 2. point it out to the relevant authorities (they’re actually not as dmb as AAA JJ makes them out to be, and if you hold their hands through this hoity toity sht one step at a time) at appropriate times. Oh and 3. I can tell you and others that you or they need to write this all up nice and tidy like and come up with an (hopefully easy) implementable solution and present it to the new director/acting director/commissioner hopefully in person and on paper.

                  And also I might join mgmt. and eventually become commissioner. From which position I will be empowered to make changes (though they will likely be more or less ineffective, as the problems might be systemic to such a degree as to be practically intractable problems sans huge investment that isn’t warranted by the marginal increase in quality) and write binding memos.

                  Though note I have literally 0 technical obligation to help solve any of these problems at present under muh duties nor do they really affect me all that much anymore (as they do you and your clients). Other than perhaps a tangential one to help stop some waste, but truthfully that is waste in other people’s realms of responsibility, many of whom “outrank” me and “get to determine what is waste more than me even if xyz is objectively waste regardless of who makes the determination”.

                  I’ve personally solved so many of the PTO’s problems it’s ridiculous. I didn’t even get a bonus for the other 10 major things through the years.

              1. “And then make consequences for failing to do exactly that procedure (they don’t even have to be harsh).”

                The consequences have to be “harsh” enough to 1) either prevent the “signatory” from doing something improper in the first place (e.g. signing their name to any POS OA that is put in front of them because, “Hey, everything’s rejected, can’t get in any trouble for signing this”) or 2) prevent the “signatory” from doing 1) again.

                “Fact is, most spes actually want to do the ‘right thing’…”

                No they don’t. They want to get it off their desk with zero consequences to their evaluation, rating, whatever.

                “… but they’re not steeped enough in the whole ‘prosecution on the record’ thing, thinking that their magical thinking is supposed to precede the principle of prosecution on the record (which is to be done simply as a matter of administration if nothing else).”

                None of the “signatories” (i.e. primaries, SPE’s, TC Directors, QAS’s, etc.) that I’ve dealt with in the past 18+ years understand anything regarding, e.g. standard of proof, evidence, administrative law and procedure, etc. They all got to where they are by engaging in the same old tried and true shenanigans that got their predecessors there. Those shenanigans include the typical, “first the verdict, and then the trial” mentality that reigns supreme in the PTO middle and upper management ranks. They have no idea how to make objective decisions. They decide what they want to do and then decide whatever nonsense, no matter how laughable, they have to write to get the case off their desk for the time being.

                1. “No they don’t. They want to get it off their desk with zero consequences to their evaluation, rating, whatever.”

                  Idk bruh, that just hasn’t been my experience. And in most arts those “consequences” are so rare as to be practically a non-concern. So for all intents and purposes they just go about their day wanting to do more or less the right thing. The issue is that what they think is the right thing isn’t always the right thing.

                2. “None of the “signatories” (i.e. primaries, SPE’s, TC Directors, QAS’s, etc.) that I’ve dealt with in the past 18+ years understand anything regarding, e.g. standard of proof, evidence, administrative law and procedure, etc. They all got to where they are by engaging in the same old tried and true shenanigans that got their predecessors there.”

                  Very correct. Though there are exceptions. And they can actually be taught, it isn’t like they’re perma tar ded regarding those things. It’s just that they’re difficult to grasp (especially if you walk in the door not understanding what a fact is or fact finding is in lawl), and few people internally have the expertise necessary to train people in those things.

                  “They have no idea how to make objective decisions.”

                  I’ve met a few that make the overwhelming majority of their decisions objectively. And often they have upped their level of making decisions objectively after a few years of generally interacting with me, with basic instruction peppered here and there, not to pretend that I’m the be all end all in teaching such.

                  But one thing that we have to understand is that this is a problem that is baked into the agency itself over decades, and now the people who are the ones responsible for fixing the problem are the ones who don’t understand the problem or how to fix it (according to you this is most of the time, according to me it is some of the time). That in itself is yet another problem.

                  Attached on to that is whether or not examiners are even technically required to understand any of this hoity toity stuff. Just as you and I discussed the other day with regards to applying caselaw and evaluating legal arguments in amendments/replies, the PTO may well decide that such hoity toity matters are differed to the board (or at least pre-appeals). Perhaps there should be another layer of (strictly legal) review before those, but that kind of hoity toit doesn’t come cheap bruh.

                3. What you want to call “hoity toity” is in fact part of your job.

                  You know – examine applications under the law….

                4. “Very correct. Though there are exceptions. And they can actually be taught, it isn’t like they’re perma tar ded regarding those things”

                  By the time most of them are promoted to the positions they’re in, they are perma tar ded. Because they’ve gotten to those positions by just playing the same old shenanigans that got them there. There is no reason for them to change their behavior.

                  “It’s just that they’re difficult to grasp…”

                  Not really. The idea that you can teach people to apply evidence in a fact finding exercise is pretty ridiculous.

                  “…(especially if you walk in the door not understanding what a fact is or fact finding is in lawl),…”

                  How are they “walking in the door” to SPE, QAS, TC Director, etc. positions without understanding evidence, and facts, and fact finding, and conclusions of law?

                  “…and few people internally have the expertise necessary to train people in those things.”

                  True. And the very few that do have no incentive at all to train them.

                  “Attached on to that is whether or not examiners are even technically required to understand any of this hoity toity stuff.”

                  Uh, yeah, they are. It’s the entire job. What do you not get about that?

                  “Just as you and I discussed the other day with regards to applying caselaw and evaluating legal arguments in amendments/replies, the PTO may well decide that such hoity toity matters are differed to the board (or at least pre-appeals). Perhaps there should be another layer of (strictly legal) review before those, but that kind of hoity toit doesn’t come cheap bruh.”

                  Lulz. I asked some friends of mine at the PTO about that training you mentioned. And it turns out that your “understanding” of that training is comically wrong. The training did not tell examiners that if they cited case law in support of a rejection that they could ignore applicant’s traverse of the reliance on the case law and “defer” to the Board. The training told examiners that if applicant cites case law but doesn’t provide an explanation as to how it’s applicable to the application, the examiners were not required to respond to the applicants citation of case law.

                  Were you even paying attention during the training?

                5. 6’s own brand of willful ignorance is part and parcel one of (and by no means the only) the problems in the LACK of quality examination.

                  What the focus of Congress should be is examination quality.

                  ANY of the points shared by AAA JJ should be on that list.

                  (and instead of actually paying attention to these things – look at the typical examiner responses on this thread alone)

                6. “How are they “walking in the door” to SPE, QAS, TC Director, etc. positions without understanding evidence, and facts, and fact finding, and conclusions of law?”

                  It seems preposterous, but it actually happens quite a lot. Obviously it happens less as you go up the ranks. Just as a for instance, illustrating how it happens, the last SPE I had knew to find if xyz is present in abc reference, but wasn’t really hip to understanding that this was “fact finding” or what that really meant, or even what a fact was. She didn’t really understand the split between fact findings and issues or conclusions of law until I laid it out, though she had the glimmerings of an understanding in the beginning. She wasn’t aware for instance that finding WD support was a question of fact, and indefiniteness was an issue of law. Many if not most primaries I know are not aware that indefiniteness is an issue of law. And I mean no insult to her, but these hoity toity issues caused a lot of friction between us because she was all but assured to point out every single situation where a difference occurs and want to do it the other way due to her being a perfectionist and really really wanting to do things the “right” (read illegal) way, which she subjectively believed to be the right way due to her having used those methods for years (as you already know).

                  As to how this occurs though is that mostly all these things aren’t all that relevant to just slogging through your day to day. If you find something confusing, you do a 112 2nd. If you find something in a claim that wasn’t there when the app was filed then do a 112 1st. If you couldn’t make the thing and you don’t think an imaginary man could either make a 112 1st. If you find exactly what is claimed under your adopted claim construction (if you even know what the formal claim construction is as opposed to just your random interpretation of the claim) then send a 102. If you find something that looks like it might could be an obvious combination, use the form paragraphs to write a 103. That’s all the office really asks of its footsoldiers. We’re making Yugo’s not Chevies, remember?

                  The training that is meant to “teach” this (what little existed prior to the new training regime spawned and being further created as we speak, it appears by your and my going back and forth) mostly just goes in one ear and out the other as being formalities that aren’t relevant to them because most of it is half-hearted, and isn’t emphasized as being the be all end all things they need to be concerned about. Further, it actually is complicated, regardless of what you think. All people with less than 110 IQ or so WILL struggle with it, most assuredly because of its abstractness. Even people around 110-120 IQ will likely struggle with some of it. There are many people at the PTO with less than 110 IQ. And I mean no insult by that. And even if it was taught well, you kinda have to read at least 20 cases or more before you’ll really start to understand. I probably read like 80 and had JD et al. constantly telling me what fer for years before I understood the basics. Oh and also some of them won’t really trust something that hoity toity, just because of it being hoity toity. They see it as academic nonsense. Further, you’re right that as they go along in their career, if you didn’t teach them all this right out in the beginning, it becomes harder and harder to teach it as being some fundamental thing that they need to base their whole work around (which mysteriously wasn’t taught to them on the first day).

                  That’s how it happens.

                  “True. And the very few that do have no incentive at all to train them.”

                  True that.

                  “Uh, yeah, they are. It’s the entire job. What do you not get about that?”

                  I get that there’s a 50/50 that mgmt disagrees with you (or “under the table/covertly/effectively” disagrees with you). Just like they did in the kerfuffle over legal arguments a bit ago. They may instead be, in reality, formally, or covertly under the table, content with lower IQ people just doing those steps I outlined above and hoping for the best. Note, history and what is currently happening on a grand scale says they are ok with this (remember outstanding quality is happening now according to them!). Which makes it more like 90/10 chance they disagree with you. But I do actually agree with you that it is the whole job.

                  “that they could ignore applicant’s traverse of the reliance on the case law and “defer” to the Board.”

                  I never said that they could “ignore” it and “defer” to the board. They effectively “defer” to the board after not ignoring it and instead consulting policy the best they can and making the best decision they can. The board member giving the training explicitly noted that we were to leave complicated legal arguments that the examiner feels are not persuasive in light of their policy training to the Board. Thus, they will give a full legal hearing to you at the board where there are people with legal training to actually do so.

                  But let’s not get off track. This other stuff is more important to deal with.

                  “Were you even paying attention during the training?”

                  Better than you or your friend apparently.

                7. “Further, it actually is complicated, regardless of what you think. ”

                  It’s not complicated at all. Objectivity is a skill that can be taught. But first you have to remove the incentives, and rewards, for the behavior of “The claim doesn’t pass the pencil test!!!!!! I have to reject it!!!!!! What nonsense can I make up to reject it, get the OA signed, get my promotion, my bonus, and first class tickets on the RCE gravy train?!?!”

                8. “It’s not complicated at all. Objectivity is a skill that can be taught. ”

                  The “it” we’re talking about involves more than mere objectivity, though that is part of it. You can keep on believing that it isn’t complicated and that it’s just merely the incentives that are the issue, I will have to disagree with you. I do agree that objectivity and the rest can be taught, and that it would sure be nice to teach them in a vacuum away from the pressure (spoiler patent academy time!) but I don’t see it as a hard requirement. Further removing such pressures/incentives likely isn’t going to happen in your lifetime so you can stop dreaming about it. You can safely treat it as something that isn’t going to happen that you have to work around if you want anything to change.

                9. away from the pressure (spoiler patent academy time!)

                  LOL – that’s the “throw up the hands” part, eh 6?

          2. Probably true.

            What needs to be done is some small measure of accountability in mgmts ranks and anti-workplace bullying lawls across the country. (the later will eventually happen).

            1. And what is your suggestion for making this happen in YOUR POPA…?

              Or is this something else that you want others to solve for you?

              1. There isn’t much to do through POPA anon. As I’ve tried to explain to you a thousand times and you don’t seem to understand.

                Workplace bullying needs to be outlawed at the state/federal level. The most POPA can do is advocate for that. Technically we could perhaps get an internal “policy” (which mgmt might actually go along with, leftists are usually pretty amenable to that, idk if mgmt is leftist in the upper ranks or not) regarding workplace bullying and which sets forth what it looks like in the PTO. That’s a longshot though, as it might open the leadership up to some kind of litigation or something (grievances for $$$$$$). I’m sure they’d rather handle that without losing $$$$. Because workplace bullying costs people thousands on thousands of dollars of production time (presuming normal work place bullying levels as in any organization). Probably millions cumulatively across the office. Once you start to acknowledge that it exists, then you have additional responsibilities to prohibit and address it (more mgmt time and money spent, like with the advent of “se xual harassment” in the 70’s) and you stand to lose $$$$$ when grievances start getting filed.

                The small measure of accountability is solely up to upper mgmt to put in place. POPA has 0 real say, though they could suggest it.

                You seem to think that these are issues that there is even a chance that these things COULD be solved by the peons (perhaps because from your perspective it is the peons causing the immediate effects of the problems) or their peon representation group. That isn’t necessarily the case anon. Some things can only be tackled top-down (that is from the mgmt end of things) or a combo of top-down with bottom-up. Not everything can be achieved bottom-up. At least within an acceptable period of time (your lifetime).

                The only thing that I can really think of that I could do to help make this happen “in” “muh POPA” is to suggest to the popa leadership that they formally acknowledge this as an actual issue and discuss it with mgmt with the suggestion that such instances be treated as mild conduct issues or similar on the part of spes. I think I might have already done that. Indeed, they might be addressing it as we speak. Other than getting elected to POPA in the next few years myself, but I can’t really do that, gotta move home, I tire of living in leftist land on the side of I-95. But even getting elected to POPA myself likely wouldn’t change much. Pam and them do a decent job.

      2. “Both you and AAA JJ assume that the goal is to come to the ‘correct’ conclusion and thus the amount of time you ‘should’ spend is dependent upon the particular scopes being claimed.”

        No. Not really. I don’t think the goal of examination should be a “perfect” conclusion because as you correctly note even an infinite amount of examining time, or litigation time, is not ever going to truly resolve the patentability/validity of the claims. There are always more references and combinations of references and arguments about those references and combinations that can be advanced and require rebuttal from applicant/patentee.

        But as far as the goal of examination being the “correct” conclusion, that is something that should be accomplished. In the sense that given the evidence that the examiner is able to gather in the allotted time the conclusions of fact and law that are made based on that evidence should be “correct” (i.e. the evidence should establish, by a preponderance, that the facts and legal conclusions reached are “correct”).

        But that’s not what happens in too many cases. What happens is the examiner can’t find the evidence and instead of indicating the claims allowable just makes up nonsense to reject the claims because the examiner knows that there are zero consequences, and in fact only benefits, to rejecting every claim even when the rejections are improper. That is the truly awful effect of the count system. Examiners are rewarded more for just defaulting to the “quality = reject, reject, reject” mandate than they are for reaching objective conclusions of law and fact.

        My proposal is to simply acknowledge that some applications require more time for the examiner to gather the relevant evidence in an acceptable amount of time than other applications. What that “acceptable amount of time” is can be debated, but I don’t think any rational person could seriously argue that the “one size fits all” count system is better, or even preferable, to my proposal. Well maybe the criminals running the PTO could argue that the current system is easier to administrate. And allows them to keep loads and loads of fees without ever delivering what was paid for. But I don’t find those arguments very persuasive.

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