Patent Examiners Suggestions for Improving the Patent Document

Patentees often blame the USPTO for low patent quality.  Examiners though often reflect upon the principle “garbage-in, garbage out.”

As part of its patent quality initiative, the USPTO is considering the patent document could be improved to better facilitate examination and ultimately improve patent quality at issuance.

The chart below comes from an internal USPTO survey of patent-examiners – asking them what attributes of a patent application are “most necessary” for quality (and efficient) examination.  For each of those attributes, the survey asked about the frequency that they are found in patent applications (click to enlarge) (PDF with Explanations):

ApplicationFailures

Note – the survey was conducted by Martin Rater – USPTO’s Office of Patent Quality Assurance chief of statistics.

Not surprising, the largest gaps are found in the area of claims written in a form that is so broad so that it is no longer relatable to the inventive concept. The chart here focuses on “top needs.” Examiners also noted elements they don’t see as necessary – perhaps most notably a “Glossary of terms provided (separate section in the specification).”

51 thoughts on “Patent Examiners Suggestions for Improving the Patent Document

  1. The absence of pretty much anything substantive as to the gist of this thread from the USPTO employees is a bit disappointing.

    Come guys (regulars and others), here is your stage: let’s see some of your ideas and concerns (on topic).

    1. Anon, your attacks, and unreasonable workload demands, when they do respond, is not helping to increase their participation rate.

      1. Paul,

        I translate your whining as “don’t apply critical thinking.”

        Thanks, but I will pass.

        As to “and unreasonable workload demands” – I only gladly point out that those are NOT my demands. Somehow you must have gotten stuck on the author of the post and failed to read through to see the source of the requirement.

        Not a new mistake by you by the way – and only goes to show that YOU are allowing your own (hurt) feelings to linger. That’s a “you” problem. “Attacks” is simply an erroneous label that you want to apply in your quest to be able to merely “say” anything and think that critical thinking is somehow “b a d.”

        It is not.

  2. “Patentees often blame the USPTO for low patent quality. Examiners though often reflect upon the principle ‘garbage-in, garbage out.’”

    If only the USPTO had employees whose job it was to make sure that issued patents aren’t garbage. What could we call those employees?

    1. If only the USPTO had employees whose job it was to make sure that issued patents aren’t garbage. What could we call those employees?

      Logic Patent Assassins.

      1. (wake me up when Malcolm stops dissembling about software and how different aspects of software earn different protections under the different IP laws:

        copyright: expression
        patent: utility

        he STILL tries to make “exactly the same as” software with “logic” and that is just not so.

        It truly is as basic as understanding the differences between:
        – math
        – applied math
        – MathS

  3. I’ve mentioned this before, but nothing upsets me more than someone dumping an IDS with 100+ documents on me without any accompanying key (and nobody has ever given me a key, so I just hate all large IDSes). I don’t know what you expect me to do with this. And it makes me think you’re trying to pull something over on the public.

    We don’t get any extra time for reading IDS documents, so you put us in the position of ignoring our job by just signing off on the documents or doing a poor job by skimming the references or you basically remove our ability to do a search otherwise (since we’ll spend all our time on the IDS documents).

    With respect to the rest on the list – yeah I guess it’s garbage in garbage out, but that doesn’t really matter to me. I get paid whether you get a patent or not or however long it takes you to get there. I suspect you’d do better at both the prosecution and litigation stages if you’d just clearly state what you think the inventive feature is rather than giving your litigation attorney enough rope to hang himself, but to each their own I guess.

    My advice to drafters in the software arts is to actually have one concrete example algorithm of *your allegedly inventive function.* Not an algorithm of the entire invention, but an algorithm specifically for the function. Here’s a hypothetical example – if you have a system which automatically routes messages or calls to one device or another based upon some form of context information, you should probably have a flow chart in there that starts with the generation of context information, shows where it is sent to, shows *how the context information is transformed into a particular output*, and how that output controls the routing of the call. You should not have 40 paragraphs telling me how smartphones have a CPU in them and then one paragraph which says “When the call is placed, the call is routed to one device or another based on context information.” I mean that’s fine for your independent claim if you want to waste your time and your client’s money, but at least have more in there so you can do something besides complain about the 101/112/103 you’re about to get.

    please distill the invention down to an “inventive concept,” so we can turn around and call that an abstract idea and smack you with 101

    Or, I dunno, maybe have an answer to this argument which is going to be coming at you regardless of whether its *the office* which makes it or not. Like in my hypothetical above – someone is going to assert that the invention entitled “Context Aware Routing” or something like that is directed to that inventive concept. If I don’t make that 101 (and nobody is going to punish me if I don’t make an Alice 101) it’s going to be made by someone who will most definitely not stop as easily as the office does on the issue. You probably want me to make that 101, whether you think so or not. I mean your client has representation and we’re here mostly to protect the public but sometimes we gotta save you from yourselves.

    1. Random, the reason people file large number references in IDSs’s because it is effectively required by Rule 56 and the case law prior to Therasense. Post TheraSense, one would think that patent attorneys would understand that they no longer have to file every reference to avoid an accusation of inequitable conduct, but they continue to do so because Rule 56 was not changed.

      Rule 56 has always been a problem. He needs to be removed/revoked.

      1. Post TheraSense, one would think that patent attorneys would understand that they no longer have to file every reference to avoid an accusation of inequitable conduct…

        I wish that were true, Ned. Unfortunately, ever since Sharon Prost took over the chief position, she has been working to erode Therasense down to meaninglessness. As far as I am concerned, one relies on Therasense at one’s own peril.

        I agree with RandomGuy that those behemoth IDSs serve no one well, but under the law as it stands (and PTO rules, as you rightly note, Ned), a competent attorney dare not do otherwise than to dump everything and the kitchen sink into the IDS. This practice can only change when the law changes, and not before. Moreover, that law change will have to come from Congress, not the CAFC, because it is clear that what one chief judge gives, another can take away.

      2. I know that inequitable conduct is the reason everything is filed. What I do not understand is why filing hundreds of documents with no ledger has any effect whatsoever. It is more inequitable, from my standpoint, to throw a hundred documents at me with no key as opposed to giving me no references at all. At least with time I might find a missing reference (or an equivalent one) anyway. Too many references actually makes it harder.

        I have not read either Therasense or Rule 56, but I cannot imagine they are both so badly formed that burying an examiner is a more valid thing than not disclosing in the first place.

        1. What I do not understand is why filing hundreds of documents with no ledger has any effect whatsoever.

          Nor do I, but it is the law nonetheless that if I cite a reference, I cannot be faulted for withholding it, while if I do not then it can be used against me for inequitable conduct. That is a screwy rule, I concede. For better or worse, however, it is the rule in effect.

          I have not read… Therasense…

          TheraSense has nothing to do with it. If TheraSense really were the law, then there would be far less cause to bury examiners under a welter of redundant references. Unfortunately, TheraSense is the law in name only. If you want to know why behemoth IDSs are necessary, read American Calcar (the first post-TheraSense inequitable conduct case under CJ Prost).

        2. It is more inequitable, from my standpoint, to throw a hundred documents at me with no key as opposed to giving me no references at all.

          From the guy who does not do a fundamental aspect of his job (think: 37 CFR 1.104(a)(1)), your sense of equity is notably off.

  4. This isn’t “Patent Examiner Suggestions fot Improving the Patent Document”. It’s “Patent Examiner Responses to Management’s Survey About Patent Applications”.

    1. How would you make it so that the title actually fits?

      In other words, what are patent examiner suggestions (without the guidance or restrictions of a management survey) for improving the patent document?

      Would Tafas compel any changes to your suggestions?

  5. The chart here focuses on “top needs.” Examiners also noted elements they don’t see as necessary – perhaps most notably a “Glossary of terms provided (separate section in the specification).”

    Well, if the claims are “clear and correct in syntax in grammar” on their face (one of the cited “top needs”), then a glossary isn’t needed. No doubt that clear claims that don’t require a “glossary” to understand are vastly preferred over claims that do.

    The point of providing definitions of terms isn’t to help the Examiner but to help the Applicant resolve any potential ambiguity in the Applicant’s favor.

  6. Strange that the excerpted table reports only highest “need” measured attributes and not all measured attributes.

    In fact, missing from the table is the largest “gap” attribute. It’s “IDS that includes the significance/relevance of each citation to the inventive concept” with a need of 7 and experience of 2. Make sure to check out the whole linked PDF.

  7. Yes, please distill the invention down to an “inventive concept,” so we can turn around and call that an abstract idea and smack you with 101.

  8. The chief examiner complaint here, of overly broad originally filed claims, is, as discussed several times before on this blog, primarily due to clients refusing to pay for any pre-filing prior art searching. This often leads to “shots in the dark claims” by attorneys or agents who are not usually intimately familiar with that specific subject matter. The examiner’s prior art search of those claims may be almost useless for the very different and much more specific claims such applicants will have to file in amendments. But second full prior art searches are not rewarded.
    Also, the named inventors are too often too busy to fully cooperate in identifying prior art when claims are drafted, or think they know what is prior art but do not, or are not even available to talk directly with the US patent attorney. Especially for the nearly half of all U.S. applications of foreign origin.

    1. Paul, in some cases you might be right. But the majority cases, I think patent attorneys have always wanted to draft broadly, claiming principals in the abstract as a much as they can. Thus they use functional language and terms at the point of novelty, and flesh out the claim to make it appear narrow by multiplying the routine and conventional elements.

      I have seen specifications drafted the very same way. There seems to be a requirement in many patent firms to go in the great detail about what is routine and conventional. When he gets to the area novelty, there is nothing there. No detail at all.

  9. So, to summarize, Examiners want a technical document written without regard to legal standards and interpretations, as opposed to a legal document written in view of years of (often contradictory) case law in a manner that protects innovators from infringers and a hostile judiciary. Would this nonsense be published if the underlying document were a simple contract?

    1. IPN, yes, what examiners would like to see in an application may not be what is needed for better patent enforcement in some cases. Especially if the application is filed as a “shot in the dark” without a prior art search to know what might really be patentable.
      But I have seen lots of what should be a “simple contract” turned into a lengthy hard to read document loaded with more ambiguities and “legal boilerplate” than any patent specification, so the answer to your last sentence is yes.

    2. a technical document written without regard to legal standards and interpretations, as opposed to a legal document written in view of years of (often contradictory) case law in a manner that protects innovators from infringers and a hostile judiciary

      If you did the former you wouldn’t have to worry about the latter so much. Lawyers trying to get cute on the latter (and thinking that they’re more important to the process than they actually are) are what causes most of the problems in patent law.

      1. If you did the former you wouldn’t have to worry about the latter so much.

        You leave little doubt as to why you are an examiner and not a practitioner.

        1. I guess. I lack the hubris to think that if I am pretty enough with my language I can turn a molehill into a mountain. You all keep trying though, scoreboard is working great for you

          1. You realize that my work has nothing to do with the broken scoreboard, right?

          2. Nonsense. You would make an excellent practitioner if that is what you chose to do. Your clients would be lucky to have someone who knows the law well enough to get them what they deserve, but can also restrain them from their own worst tendencies.

            1. You would make an excellent practitioner if that is what you chose to do.

              Not only does this appear to rely on evidence not present, this flies in the opposite direction of the evidence present.

              Greg, you may fell that you like some of what Random posts, but please, this type of glad handing only diminishes the value of your own posts.

              1. [T]his type of glad handing only diminishes the value of your own posts.

                My posts are worth exactly as much as you pay for them. I doubt that their value can be diminished (zero is rather a solid floor for prices in this market).

                1. Positive value = people pay me to read my posts
                  Zero value = no value changes hands in exchange for my posts
                  Negative (i.e., less-than-zero) value = I pay people to read my posts

                  Given that I can know with all the certainty of a bodhisattva that I am not going to pay people to read my work, it follows that zero is as low as the market will go.

  10. Examiners also noted elements they don’t see as necessary – perhaps most notably a “Glossary of terms provided (separate section in the specification).”

    This is a cheap shot—especially relative to the very thoughtful and knowledgeable examiners who grace these boards—but the reason that the surveyed examiners do not think that a glossary of term is necessary to a high quality examination is because few of them bother to read the glossary even when it is provided, and will actively resist employing the definitions provided in the glossary when attention is called to these definitions.

    I cannot tell you how many “back-&-forth”s I have had with examiners who say “the broadest reasonable interpretation of [X] is ________,” and when I show them the explicit definition in the specification that is narrower than the so-called BRI that they have offered, I get a response of cut-&-paste boiler-plate to the effect of “Limitations are not to be read into the claims from the specification. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).” Basically, they want to be able to base the whole examination on the claims, without having to trouble themselves to read the spec.

    1. This was going to be my comment. I don’t know how many Examiners actually read the specification. I can’t count the number of times I’ve explained something in an application to an Examiner by reading a paragraph out of the specification verbatim to them.

    2. “I cannot tell you how many “back-&-forth”s I have had with examiners who say “the broadest reasonable interpretation of [X] is ________,” and when I show them the explicit definition in the specification that is narrower than the so-called BRI that they have offered, I get a response of cut-&-paste boiler-plate to the effect of “Limitations are not to be read into the claims from the specification. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).” Basically, they want to be able to base the whole examination on the claims, without having to trouble themselves to read the spec.”

      Those guys want you to put that more specific language in the claims so that everyone will know what you’re talking about without having to guess at whether or not you think that definition is binding or whatever legalities etc. There are examiners that see it very much as their duty to get that language into the claims before the case issues and the above is how they do that. It isn’t so much that they want to do the whole examination just from the claims. It’s that they want those claims specific with no need to play a legal guessing game.

      1. 6, I wholeheartedly agree.

        This is an age-old problem. Applicants like to use broad functional language and terms to describe concepts while the law only permits them to cover what they disclose and equivalents, and requires them to claim inventive subject matter clearly and distinctly.

        Claiming results and principles an abstract is how most patent attorneys routinely draft claims. I don’t know if they are taught that, but that is what they do today and that is what they have done since claims were first introduced.

    3. Obviously you’re correct on this Greg, *assuming* that your definition in the Spec is actually a definition. If the word “may” appears in there its not actually a definition regardless of what other language is in there. I can’t tell you how many times someone has told me that X is defined as Y in the Spec, and it turns out that X may be Y (or similar language).

      My original SPE never read the Spec and told us never to read the spec either. Its not without its logic. If you read the Spec you’re going to subconsciously limit your search to the way of thinking in the preferred or exemplary embodiments rather than the actual claim language. I can tell you how often someone has come to me and said “So one example of this claim is situation ABC and I can’t find it” and my response is “Totally different situation XYZ also fits with the claim language and it happens every day.” I prefer to read the spec but largely as a matter of how hard a time I am going to give this guy in my rejection, not as a true improvement to my art searching process.

      1. My original SPE never read the Spec and told us never to read the spec either.

        From the same guy whining about doing his job with IDS’s, comes the admission that you do not do your job…

        Not only do you show why you are not a practitioner, you also show that you should not be an examiner.

      2. Random, in order to avoid biasing the search, I was originally taught not to file IDSs until after the search is complete.

        1. That could never work in Pharma. Our clients care too much about PTA to run the risk of a late filed IDS turning into “applicant delay.”

        2. Random, in order to avoid biasing the search, I was originally taught not to file IDSs until after the search is complete.

          Well that would definitely not bias our search, haha.

          Personally, my search goes like this – if I have a foreign search citation on the same claims, that’s first (and it usually stops there, other offices tend to search well even if I don’t like how they document their rejections), then IDS documents, then inventor search, then assignee search keyword limited (for some companies that use boilerplate language this helps with background limitations), then I go into my general searching.

          If I were to get an IDS “late” (i.e. after I made my initial rejection) it would have to be significantly better than my rejection for me to bother to rewrite my rejection, otherwise I’m going to stick with my original one until it doesn’t work anymore. I guess that’s a problem for the applicant from a compact prosecution standpoint if we are arguing over decent reference X instead of really great reference Y. But you are correct that I might get enamored with an IDS reference and cut off the rest of the search (i.e. “biased”) because I have something good enough.

      3. If the word “may” appears in there its not actually a definition regardless of what other language is in there.

        Agree. I am talking about passages in a section entitled “definitions” that read along the lines of “as used herein, “[X]” shall mean ______.” There is no ambiguity about “shall.”

      4. My original SPE never read the Spec and told us never to read the spec either.

        MPEP 904 says that “[t]he first search should cover the invention as described and claimed…,” (emphasis added). How does one search the invention “as described” if one does not read the written description? I concede the logic of your former SPE, but still and all that does seem rather impossible to square with the MPEP.

        1. Greg,

          At a higher level:

          37 CFR 1.104 Nature of examination.

          (a) Examiner’s action.

          (1) On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application or patent under reexamination with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.

          1. (and yes, that is the ENTIRE application – not just the claims to do some type of key word search)

        2. How does one search the invention “as described” if one does not read the written description?

          This answer will probably be more concise than you expect but: One doesn’t. Same with Anon’s post below. As I’ve written before, even if you’re a junior examiner there is simply nobody in the office with enough time to read your spec and essentially do your job again. The standard quality control is on the order of a single digit number of minutes (or maybe 15 mins on a good day).

          Posit what you can double-check in 15 minutes. You have a better chance (and this is entirely true) of sneaking new matter into an amendment when your remarks state on their face “this limitation is new matter” than you do of amending your claims to cause an antecedent basis issue for the simple fact that quality control can *control* the 112b rejection in a reasonable way it can’t control a 112a rejection.

          Consequently, people get punished when their end result is inappropriate (i.e. a lawyer convinces someone above you your rejection is bad) but there’s simply no mechanism by which someone can determine that a new matter or enablement rejection (except in the rarest of circumstances) should have been made or a search was incomplete. Since an examiner gets judged on the correctness of the rejection considered and not the correctness of the search, the examiner learns to come to a proper rejection and not correctly search.

          That explanation was for informative purposes, not justification. It’s simply a point where a significant portion of the examining corp decided its not going to follow the MPEP and the office lacks the resources to police the issue. It is what it is.

  11. Was there any taking into account the presence of (judicially induced) patent profanity?

    1. …also, what is the gist of this “inventive concept” that examiners are trying to “relate to”…?

      1. To answer your question, hopefully . . .

        The best claims actually claim what is described in the specification as the invention. I know, many examiners may not be reading the specification, but I do, so this is MY anecdote.

        For example, say you have developed a new printer toner composition. Claim 1 generally claims a printer with a toner cartridge with toner in it. Down in Claim 5, we finally get to the new toner composition. That’s fine, that’s the prerogative of the drafter to slowly narrow the scope. BUT, when responding to a rejection, don’t try to narrow the claims and focus arguments on non-inventive things like, say, the shape of the toner cartridge.

        My point being this goes both ways. Yes, examiner’s need to read and understand the specification so they can have a framework for the claims, BUT ATTORNEYS ALSO need to read and understand the specification so that their amendments, responses, and arguments are at least directed towards what is described as inventive in the specification, not just latch on to some random feature mentioned in passing in the spec. Like you like to say, “don’t make YOUR metrics MY problem.”

        1. Notwithstanding the soundness of your advice, since this is your personal anecdote, your admission to me (or to general attorneys) falls a bit short of the mark.

        2. “That’s fine, that’s the prerogative of the drafter to slowly narrow the scope. BUT, when responding to a rejection, don’t try to narrow the claims and focus arguments on non-inventive things like, say, the shape of the toner cartridge.”

          Maybe they consider that shape to be inventive?

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