USPTO has launched its new Patent Public Search Tool:
Super useful, but you are going to need a very large screen to get full utility.
America's leading patent law source
This appears to be equivalent to the new search tool that many (most?) examiners are now using.
As the prior USPTO online search tool was a pile of rotting fish-product based garbage, this should be a wonderful improvement for any amateur searcher.
Hmm, step one in outsourcing the examiner function (in view of Night Writer’s prediction of downsizing at the Patent Office)….?
There may even be an “equitable” angle in there.
Hmm, step one in outsourcing the examiner function (in view of Night Writer’s prediction of downsizing at the Patent Office)….?
I never understood why 3rd party submissions are so uncommon. If you’re Microsoft, don’t you want to make sure an examiner finds your reference to cite against Apple’s filing? Am I wrong that an ounce of prevention is way cheaper than a pound of cure here? It’s literally free to file 3 references and 20 or something is cheaper than $200.
I never understood why 3rd party submissions are so uncommon.
I expect that you are being facetious, but in all sincerity, they are uncommon because of the absurdly short window that the statute provides for their submission. Also, both times that I have ever submitted prior art, I served up a bullseye §102 on a silver platter, and the examiner passed it over. I think that most examiners mistrust third party submissions and are unwilling to use them.
I expect that you are being facetious, but in all sincerity, they are uncommon because of the absurdly short window that the statute provides for their submission.
I’m really not. I have 15hrs to pick up a new application, read it, search art and prepare an action. I’m not saying that to complain, I’m just using it as a reference point. I know some companies have thousands of applications but that is a tiny fraction of my database, and they don’t have to particularly map either. You’re telling me a company can’t determine which of their own references are relevant in what? 30-60 minutes? Is that hour not worth it to avoid having to defend a patent?
Also, both times that I have ever submitted prior art, I served up a bullseye §102 on a silver platter, and the examiner passed it over. I think that most examiners mistrust third party submissions and are unwilling to use them.
I know we run in different fields, but I have been with the office for over a decade and have literally never seen a 3rd party submission on any of my applications. Not a single one.
I will agree with you that if 3rd party submissions are anything like IDSes, they are very hit and miss with examiners. Not having had one, I don’t know how detailed the suggestions for their use are so at worst I would imagine they are exactly similar to IDSes. I don’t read every document in an IDS, especially if I get a submission with a lot of them. They just go in the pile for searching with the CPC classes and the inventor/assignee names. But I assure you if someone sent me a letter saying “This is a 102 and here’s some general mappings” I would be looking at that closely, just like I read every international search report closely. I would say may ISR reference usage is >50%, and my IDS reference usage is <5%.
You have six months from the application’s earliest publication date. You have to be monitoring every new publication that emerges to spot the relevant ones against which you want to submit before the six-month clock runs. If you work in a crowded industry, that is a lot of publications to monitor.
Meanwhile, both times that I submitted a 3rd party IDS, I submitted only a single reference (my client’s own publication), with a detailed claim chart mapping each limitation of the newly published claims against my client’s art. Neither time did the examiner do anything with either. C’est la vie…
Greg, I’m grateful for your report of your (disappointing) experience with observations on patentability at the USPTO. I wonder, do you ever make observations at the EPO and, if so, what is your experience there?
In the American Axle case, in which the Supreme Court might still take an interest, there is a parallel patent application at the EPO and a member of the public has submitted observations. Patentee replied to them, whereupon further observations were filed. What will the EPO Examining Division write next. Should be worth watching. Here a Link:
link to register.epo.org
I have never submitted art in the EPO. Both of the applications against which I submitted art were US-only. I have had art submitted against my EP applications, and the EP examiners always do more with it than I have ever seen a U.S. examiner do.
“I have been with the office for over a decade and have literally never seen a 3rd party submission on any of my applications. Not a single one.”
Several years ago, one was filed against my client. It was abusive in that the law firm included an unsworn affidavit that tried to “supplement” what was said in the references submitted. The real party in interest didn’t do a good enough job of distancing themselves from the law firm submitting it (they used the same firm they used for their prosecution) and so the client was able to deduce the identity of the real party in interest….an entity the client was doing business with.
The PTO also didn’t do a good enough job of reviewing the petition to make sure it complied with the rules. I petitioned the USPTO to strike the 3rd party submission for being defective and the petition was decided in my client’s favor. The third party re-filed the submission, without the “affidavit” but it had no effect on the prosecution as we had filed a reply to the submission that the Examiner apparently found persuasive because none of the art cited in the submission made its way into an Office Action.
Pre-AIA and over the course of 2 or so years, I informally (via e-mail) submitted my own patents as 3rd-party prior art for 10 – 12 apps.
The majority of the Examiners ignored my patents (and my 1-time / app e-mails), one or two complained that I was “bothering” them and to go away, and a couple thanked me; using the patents in 103 rejections.
Which rejections the applicant’s attorneys traversed via argument and amendment.
I have 15hrs to pick up a new application, read it, search art and prepare an action… You’re telling me a company can’t determine which of their own references are relevant in… 30-60 minutes?
Sure, but you do not have to search the patent office to find which cases to examine. Someone assigns them to your docket.
Deciding what to submit is not the hard part. The hard part is knowing which applications are sufficiently close to your own area of concern to merit a submission.
My company’s competitors only rarely send me their published applications to make me aware that they have claims relevant to our business. Usually, the way that I find this out is that their application gets cited to me as prior art in one of my own applications, at which point the statutory deadline for me to make a third party submission has already flown.
Greg – one Examiner’s experience here – I have only had ONE third-party submission in over a decade at the Office. But, that ONE was well-mapped out, like you say, and after reviewing it for accuracy, I used the mapping almost word-for-word in my next rejection.
Similar with PCT IPRPs, if they are good, I have no problem re-using the work of another searching agency (it’s all public, which is kind of the whole point). I’ve found that about half of them are useful, the other half not so much, for various reasons.
That comment fits with one case I was watching at the EPO. Well-argued observations were filed, whereupon the Examiner issued Applicant with a very brief Communication which stated nothing more than that the 3rd party observations sets out the situation competently and that the Examiner awaits with interest an exhaustive reply from Applicant to all of them.
This is because the PTO has implemented a “you can lead a horse to water but you can’t make him drink approach”: you can explain everything about the prior art reference EXCEPT how it renders a claim non-novel/obvious. If you say so much as, “…and therefore claim 1 lacks novelty”, they won’t accept the submission.
And if the PTO accepts the submission, but the examiner doesn’t bite, how does that look later?
So I think many people reason, better to make my argument on this publication when I can make a real case, with a panel of adjudicators who aren’t looking for a “count”, e.g. in the context of IPR/PGR.
That’s an interesting comment, Dan. Here in Europe it is very often the judgement NOT to show the Applicant your best prior art while the application is still pending, for then Applicant can take account of it and finesse around it with a judicious amendment of the claims, while the opportunity is still there.
Put it another way: as Applicant, a) at the EPO and b) at the USPTO, when you you prefer to see the most penetrating prior art, before or after your patent issues?
Certainly strategic – but are there ethical consideration in doing so, in that the choice deliberately creates a wasteful situation for BOTH the competitor AND the government, as well as potentially harms other competitors against whom such a patent may be wielded?
In other words, if one is aware and stays quiet, that may be good for the one, but at a very real possibility of harm to many.
In the new post from Dennis today he confirms that the only 3rd party observations to get admitted are those flied within 6 months of A publication and accompanied by the non-trivial office fee. I agree with Greg, that even for those who monitor A publications, the 6 month window is nowhere near long enough for the necessary analysis by a would-be commenter, whether to make the observations or instead keep their powder dry till later.
Could it be that i) both the legistlative and executive branches want to promulgate the fiction that 3rd party observations are a good thing and to be welcomed, while at the same time ii) making sure there are as good as none ever actually filed?
The fee is waived if you submit three or fewer references. The fee is not the hardship. The hard part is the very narrow window of time.
The cost of preparing the 3rd party submission is likely not trivial is still an investment by the real party in interest, especially if the third party submitted detailed claim charts.
The “new post” is not what you think it to be (vis a vis comparable numbers to the “scourge” of patent law suits).
I take your point, although I certainly said nothing about the claims “lacking novelty.” I just submitted a detailed claim chart, mapping the pending limitations to my client’s publication.
“ I never understood why 3rd party submissions are so uncommon.”
That’s nice Random. Detached and in a completely different direction from my post – but nice.
“ You’re telling me a company can’t determine which of their own references are relevant in what? 30-60 minutes?”
This exhibits several indicators that you lack ANY real world work experience. Let me guess: you went to work for the patent office directly from school and have never been ‘in the real world.’
“They just go in the pile for searching with the CPC classes and the inventor/assignee names”
Yes – that is called “being considered.” Hey, I would be happy if examiners actually read the application that they are examining (for starters).
“ I would say may ISR reference usage is >50%, and my IDS reference usage is <5”
Certainly – the ISR’s are generally the work of another examiner, and while the laws of different Sovereigns are – gasp – different, the general concepts are just as close as the examiner’s boilerplate snippets that they are taught to use.
And now Snowflake will demonstrate once and for all how he/she is not “cyberstalking” us by not responding with some nonsense to this post.
LOL – your use of “us” is decidedly inappropriate, and actually makes my case for me.
You see, I engage most everyone. You, on the other hand, show a nigh singular 0bsess10n.
You started out the year pretty good in engaging a few others, but have really outdone yourself with a record sixteen active threads (albeit only five fresh ones) in which you have sta1 ked me with your meme/tell of NO meaningful point of law or cogent position being put forward in your posts, and every post from you to me is mere attempts at ha ra$$ ment.
But here I am curious – what message are you attempting with the use of “Selah?”
“I engage most everyone.”
Whether we like it or not! 🙂
Certainly. And you might want to reflect that when I do engage with you, for example, on items that you might not like, I am actually doing you a favor of disabusing you of errant understandings.
“Hey, I would be happy if examiners actually read the application that they are examining (for starters).”
I would amend slightly, though: “read AND UNDERSTAND the application they are examining…”
I agree with your addition!
Making the search tools available to the public isn’t anything new, and is in fact required by statute. 35 USC 41(i)(2). What is new is making them available online instead of only through the public search room.
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