USPTO Director Kathi Vidal is beginning to move forward with various initiatives that I’ll discuss in upcoming posts. Most recently though, the Office issued a Request for Comments seeking public input on mechanisms for “bolstering the robustness and reliability of patents.” Comments due January 3, 2023 via Federal eRulemaking Portal at regulations.gov (docket: PTO-P-2022-0025). The document includes a commitment from the USPTO to increase patent examiner time, training and resources.
One question asked in the RFC is whether the USPTO should require patent applicants to link claim limitations to particular disclosures in the originally filed specification. That linkage would facilitate examiner understanding of the invention as well as considerations such as enablement and written description. In some cases cases, the office could automatically demand more detailed analysis — such as for genus; markush; or functional claim limitations.
Lots more in there: read it here.
Re: Patent examiners on staff.
It was pointed out to me that the office’s recruitment listings for patent examiners are mentioning that signing bonuses may be available. I don’t recall seeing that in recent years.
You could be sure that we would get a bunch of pin head ideas from a D appointed director who was primarily a litigator. I doubt she understands a tenth of what is in this document.
Number one way to improve patents: better searches.
Number two way to improve patents: Get better CAFC judges. Right now they are judicial activists that care more about weakening patents than creating consistent workable case law for the patent system.
Those two would accomplish about 80 percent of what is feasible.
link to youtu.be
I could not agree with Blackburn more. And this is exactly what Google is all about.
To get better patent searches you need to invest in additional examination time, which means increasing fees. So unless you support fee increases, you’re just asking for free icecream.
I definitely support higher fees. In the unlikely event that I were ever appointed director, one of my first acts would be to assign an economist to estimate the revenue maximizing fee for the utility patent system, and then set actual fees at that number.*
* I feel robustly certain that the revenue maximizing number is actually higher than the present number, but if it turns out that the revenue maximizing number is actually lower than the present number, then I will have been wrong in saying that I favor higher fees.
I’m curious how one could set constraints to avoid the repugnant maximum of “set filing fees as low as possible without producing congressional intervention.”
Low filing fees -> Minimal examination -> Many broad claims issued -> Much revenue from post-grant fees (maintenance, reexam, IPR).
Greg, you should listen to Blackburn. She talks about the pharmaceutical industry.
That is a piece of mindless Fox tripe.
Very (very) little substance there.
anon, I don’t agree. There wasn’t a lot of substance because there wasn’t time for Blackburn to explain her points. But her points were exactly correct.
She was saying that what they are doing is trying to get rid of innovation because it is a threat to unions and monopolies. That is exactly right. You know the Spartans used to kill any of their slaves that innovated. That is a fact.
You admit to my point with, “There wasn’t a lot of substance because…” as the “why” is not material as to the nature of the item (and its actual “content.”)
I fully “get” the Fox News “style,” but the point here is that the “style” misses substance (for whatever reason), and just becomes more back-and-forth noise.
Note that I am NOT disagreeing with you as to what that spec of noise is directed to. It is well known what the Liberal Left are really after.
I think it is interesting to hear because Blackburn is on the Judiciary Committee. So, knowing her opinion on these matters is important.
That may be — but is lost in the noise, and certainly is not highlighted.
Yes, I do support higher fees to improve search. Much of my work is international.
So, I am very aware of the quality of the USPTO compared to other patent offices. I would rate the USPTO at near the top in quality of examination. JP, KR, CN, and the EPO (DE and UK) are the main offices (I do some work in CN and a tiny bit in South America). I regularly write responses and sometime interview examiners for international offices.
The gold standard of the search is the ones performed by the EPO when they are the receiving office.
We need to up our search to this level.
By the way, all the arguments about our claims in the USA being too broad or junky is not held up by my experiences. I regularly get the same claims or even broader claims allowed in every jurisdiction I mentioned above. If anything–if anything–the USPTO is tougher than the EPO. Mainly this is because the examiners at the PTO use broadest reasonable interpretation and do not contextualize the claims as much as other patent offices. Further the PTO regularly will just perform another search and reinterpret the claims, which is essentially a reset.
So, to sum up, the USPTO’s biggest problem is that searching is not as robust as it is in at the EPO. That is it. The rest is as good as anything that is done around the world.
And our patent laws are good too. I have just done a few appeals in Europe and the laws there are terrible as they are not based on principles but are set up to allow certain types of claims.
Thanks for the insight Night.
Number one way to improve patents: better searches.
To improve patent examination — absolutely.
Number two way to improve patents: Get better CAFC judges.
Not that you are wrong, but that goal leaves a lot up to the imagination as to what makes a better judge.
To me, the number one way to improve patents (i.e., have patents that are still valid after they go through litigation) is to have BRIGHT LINE tests. Fuzzy tests (like those that the Supreme Court are fond of) lead to unreliable patents.
Let’s just assume the the function of patentability f(p) is defined by the equation of:
f(p) = Ax + By + Cz – D, where x, y, z are factors and A, B, C are weights and D is some standard by which a patent is measured whereby if f(p) > 0, then patent is granted.
The fuzzy approach of the Supreme Court is akin to allowing individual judges to determine A, B, C, and D as they see fit. This is great for a judge who wants to arrive at a particular result as it is easy to modify A, B, C, and D. Just as an example, preemption is sometimes a factor in 101 and oftentimes it is not. In 103, indicia of nonobviousness can be given a lot of weight or little weight.
The problem with this approach is that the Examiner, the Board, the District Court judge, the Federal Circuit panel, and the Supreme Court are all capable of modifying A, B, C, and D as they see fit. As such, a claim that is unpatentable at the Examiner may be seen as patentable by the Board, which may be seen as unpatentable by a District Court judge, who gets reversed by the Federal Circuit, who are then reversed themselves by the Supreme Court.
The law should be designed to be consistently applied (i.e., via bright line tests) throughout the process. When that happens, there is less litigation because valid patents remain valid and it doesn’t pay for defendants to challenge them on grounds that were already considered by the USPTO. There will always be instances in which a patent can be challenged on grounds not considered by the USPTO (i.e., previously-undiscovered prior art). However, there is where having better searches comes into play.
A combination of finding the best prior art and having consistently-applied law is what will improve patents and confidence in the patent system as a whole.
Patents need to be accessible to all individuals, which means that a patent application shouldn’t be “dinged” because the specification wasn’t “perfect.” Otherwise, the patent system devolves into the sport of kings where only the most sophisticated (and well-financed) parties can get patents. It may be easier for the USPTO to examine “perfect” specifications, but allowing for imperfect specifications is the tradeoff needed to ensure the accessibility of the patent system to EVERYONE.
+1,000,000
Have another million upticks from me.
+1
Translation: “We need really simple rules that allow 100 times more junk to be granted because it’s all sooooo confusing right now.”
Grow up and try to appreciate that the world doesn’t revolve around you or your horrible clients and their so-called “inventions”. The fact is that any rule that is “bright” that would eliminate confusion in the areas that are ALWAYS going to be problematic (like the patenting of logic and information processing) will ALWAYS be objected to vociferously by you and your cohorts. We all know this. It’s well-documented.
Grow. Up.
WT, I agree, and a concrete example is switching from TSM to KSR. KSR means anyone can decide that something is obvious and can find some reason.
Scalia agreed too.
And WT this is what I was talking about with the CAFC. If those judges actually had an intent to make consistent case law, then the problems we are having now would be minimal.
Just as an example, people complain constantly about Alice but the CAFC could easily cabin Alice.
RE: 2.c. “require applicants to explain or identify the corresponding support for each claim, or claim limitation, in the written description of every prior-filed application for which the benefit of an earlier filing date is sought, under, e.g., 35 U.S.C. 119, 120, 121, or 365 (including requiring such support whenever a benefit or priority claim is presented, including upon the filing of a petition for a delayed benefit or priority claim and upon the filing of a request for a certificate of correction to add a benefit or priority claim)?”
Is this proposal inspired by the USPTO cases dealing with Gilbert Hyatt?
IDK. I think the root problem is the FedCir, not the USPTO. I challenge everyone to compare a few 90s-style patents to modern-style patents.
In the modern application, 50% of the text will be boilerplate. Another 20% will be cut-and-paste claim text. Substantive background sections don’t exist anymore. If there is any description of the technical problem/advantages, it’s buried deep in the middle of the document and written in vague terms.
Net is that it takes 4x as long to understand the modern ones.
This may not be a problem for litigators/judges, but it is for everyone else in the system.
+1
Old, do tell us more. It sure is a problem for me, trying to get my US clients to issue in Europe with claims of useful scope. Given that you are a curmudgeon, I’m sure it is an irritant to you. But why for you personally is it a “problem”?
Yes, and all of these features of the current US applications are the direct result of US patent policies and case law. Boilerplate is in there because you may need it to provide support for claim terms that the examiner alleges aren’t defined. Background sections disappeared after it was held that statements in them were admissions that could be used to make obviousness rejections. There is no requirement to describe the technical problem. I hope the recently announced lobbying effort by Iancu et al can effect some positive changes, but doubt it.
Thanks Connor — MaxDrei has been around long enough, and told often enough, about US patent profanity generated by our courts (and yet insists on having a mind unwilling to learn).
It is true that I (in Europe) have been around here since the year dot. It is true that I have been informed on a multitude of occasions that the problems at the USPTO have been created by the courts. The way I see it, the more times that fact is flagged up, the sooner something might be done to alleviate the problems.
Reasonable minds might differ, on the issue which mind in all of this is the most “unwilling to learn”.
I chuckled at your suggestion comparing what a reasonable mind may come to, given you endless shilling.
NO reasonable mind would place you above me on ANY learning scale.
“The document includes a commitment from the USPTO to increase patent examiner time”
The last time the PTO said they were increasing examination time the changes resulted in some areas being allocated less time than before. So I’d suggest taking this commitment with a grain of salt.
“Introduce more examining time into the patent examination system. The USPTO recently made changes to examination time and is exploring further changes, particularly in cases with several continuations (large family cases) and cases with evidence submitted in support of patentability.”
That’s what the document actually says. In other words, they’ll increase the time for some obscure examinations, not actual examinations.
It also says:
“b. Give patent examiners more training and resources. The USPTO has released a new search system for patent examiners to use in identifying relevant prior art to make patentability determinations. The new Patents End-to-End Search system includes significant enhancements, such as access to more than 76 million foreign documents with high-quality English translations and new, improved search capabilities. The USPTO is exploring additional technology and resources of prior art to improve patent quality. The USPTO also recently announced a collaboration with the American Intellectual Property Law Association and the Intellectual Property Owners Association to develop examiner training on enhancing the clarity of the prosecution record. The USPTO also is exploring additional training for examiners on new matter, assessing claim scope, and the use of functional claiming.”
Note:
“more than 76 million foreign documents with high-quality English translations ”
I’m not sure where these translations are available as I would like to have them. They didn’t mention it in the training.
“and new, improved search capabilities”
I also do not understand what these “improved search capabilities” are other than maybe a bit of better ability to type in search queries (nominal improvement at best).
“Because an examiner must establish the effective filing date of each claim in order to identify applicable prior art and evaluate the claims for compliance with the requirements of 35 U.S.C. 102 and 103, examiners often spend a significant amount of time, particularly on continuing applications, or applications that contain numerous benefit or priority claims, evaluating issues related to 35 U.S.C. 112(a) ( e.g., ascertaining the filing date of individual claims).”
Nice that someone finally recognized that after I posted a whole blog post worth of text about it half a year ago.
“RCE Practice
With rare exception, after an examiner closes prosecution, including after the mailing of a notice of allowance or when an appeal has been taken to the PTAB, an applicant may file an RCE under 37 CFR 1.114. Upon receipt of an appropriate RCE, the examiner will reopen prosecution and issue another action. Currently, this cycle may proceed indefinitely, subject only to a finding of prosecution laches. See MPEP 706.07(h) and 2190. The USPTO seeks input through question 3 below on this current practice and whether there should be internal process changes once the number of RCEs filed in an application reaches a certain threshold, such as transferring the application to a new examiner or increasing the scrutiny given in the examination of the application.”
Not even sure what all they have in mind for RCE “increased scrutiny” or why that would be needed.
Here’s the actual doc.
link to regulations.gov
“I’m not sure where these translations are available as I would like to have them.”
They are referring to the translated text produced in the new search app for non-english applications. I don’t blame you for not knowing this, because to refer to those translations as “high-quality” is laughable.
“I also do not understand what these “improved search capabilities” are”
Two things immediately come to mind are: 1. Fewer stop words, 2. Larger search results buffer. They also probably count the “similarity search” as an improvement, but that dubious at best.
This Request for Comments is a nightmare. It will take a lot of additional attorney time to comply with these requirements if they are implemented, time that the client likely will not want to pay for. Lord, take me now!!!
Which ones do you think will take a long time, and how much time per app are you talking about (per app etc.)?
+1
Why not skip ahead to the next step which is to have the Applicants examine their own applications but the result has to be a half-a$$ed rejection just like the ones the examiners make.
+1
I agree with the good director. Also, in other news, the market is well down bros, great time to buy. In still other news Tulsi “the hawaiian mommy” Gabbard quit the dem party, on account of her being too based. Hopefully more dems, like maybe our good director, will follow suit.
I should add, we could do quite a bit to help out with these things, but there isn’t a lot of will to make things happen to make patents primo. This largely being because of money and historical practice. Could do a drawings check when the application comes in the door and make them have at least half formal drawings by the time the examiner gets the case. Could do like the ROW does and make them put part numbers in the claims, or take a more modern approach and have them put the part numbers linked to claim limitations in a digital markup of the claims instead of the actual claims, with modern tech. Could encourage examiners to discuss claims, claim construction, and the office’s adopted claim construction, whenever the claims appear at all iffy/subject to two or more interpretations/at all difficult to understand and provide generous incentive to do so, and have the claim construction put on the record for any tough or hard to understand limitations. Could make patent claims adjustable further down the road (which I still don’t understand why they are not if we’re going to have the current claiming ability and if it’s the patent is an entitlement, especially if it is only for narrowing amendments). Could do a thousand things, but nobody really wants to spend more money or overturn the historical practice. Arguably because of the courts being so clamped down on the patentees.
You want all that from applicants. Yet examiners are not even required to put the (usually BUI) claim construction they are using on the record. How about y’all agree to do that, and we’ll talk.
+ 1
Further, when this point of argument does s presented in an applicant’s response, the Examiner is required to answer the substance of the argument and provide the factual basis per the Graham Factors — and not take a ‘new’ and equally shallow rejection with a declaration of ‘this action is final.’
I’m more than happy to discuss the claim construction in my cases. Indeed, my spe is always on me for oversharing and overcommenting. Trying to get bureaucrats to understand that attorneys generally appreciate the discussion, or can ignore it if they please, is like pulling teeth. I honestly don’t understand why.
+1
That first comment makes good point. As long as the US PTO charges so little, and gives examiners so little time, for prior art searches and examinations, there are always going to be potential quality issues compared to the prior art that someone being sued is going to dig up and analyze by spending a lot more money. Yet with only small a percentage of patents ever getting sued on, it simply does not make sense to require applicants to spend that kind of money.
… never mind the lack of authority to try to force applicants to do something simply not legally required of them, eh?
6, the latest from Tulsi (open discussion with Joe):
link to open.spotify.com
“mechanisms for ‘bolstering the robustness and reliability of patents.’”
Sorry, Director, but the first thing to do is to put down your torch and stop with such straw man assertions.
There is no there, there, Kathi.
The biggest problem ISN’T the issued patents themselves, but the anti-patent forces of evil, including (but not necessarily limited to) the anti-patent SCOTUS judges, the anti-patent CAFC judges, the anti-patent district court judges, the anti-patent PTAB members, the anti-patent Senators and Congress members, and yes — even some anti-patent employees of the Patent Office itself.
These are the forces that render patents unreliable.
THESE.
I think you nailed it.
+1
One obvious, simple and inexpensive patent examination improvement (suggested several times over the years) is simply better docket control, more like a competent modern court docket system.
For example, when any patent application has been sitting pending un-issued for more than XX years from its true (earliest claimed priority) filing date, it could be put under direct supervisory responsibility of the Group Director for expediting it’s examination. If even that does not work quickly enough the Director could transfer it to the Central Reexamination Unit (CRU). The PTOs unfortunate prior docket management reputation for “submarine” patents and prosecution laches should not be continued. It encourages time-wasting RCE’s or continuations and new claims written years later to cover different and independently developed commercial products of others.
Is submarining even a problem anymore (I ask somewhat rhetorically)?
RCEs do not extend patent term. Continuations do not extend patent term.
New claims written years later to cover different and independently developed commercial products of others are the rightful entitlement of applicants who have specification support for their claims.
What does extend patent term–and even then, usually only slightly beyond the natural term–is examiners holding to untenable rejection positions that are not sustained on appeal. If you want to kill “submarine” patents, improve the PABC process to weed out bad rejections and find ways to hasten the ex parte PTAB process.
“when any patent application has been sitting pending un-issued for more than XX years from its true (earliest claimed priority) filing date, it could be put under direct supervisory responsibility of the Group Director for expediting it’s examination”
Setting goals for the USPTO to terminally dispose older applications will incentivize more such applications.
I’ve got cases which are 10+ years old.
Let’s imagine what happens when you set the Work Group Director’s bonuses to be dependent on terminally disposing older priority applications.
WGD: Ben, why are you still examining this 11 year old case?
Ben: Because the applicant won’t give up. It’s had 7 RCEs, and I’ve scoured the application for anything allowable and found nothing. I told applicant this and suggested they appeal, and they just filed another RCE with minor amendments.
WGD: Well, you need to either convince them to abandon the case or you need to allow something.
Ben: There’s nothing allowable, and I can’t convince them.
WGD: Paul Morgan wants this case resolved and I want my bonus. So figure it out.
Ben ends up allowing the case because he’s a clerk and his boss has implicitly indicated he must allow something.
Patent attorneys figure this pattern out, and realize they can put WGD pressure on examiners by merely delaying for XX years. Patent attorneys who merely need a patent, any patent regardless of term, begin to delay applicants to produce this pressure. More cases reach XX years without issuing.
Paul Morgan realizes the error in focusing on pending applications rather than applications receiving no office action. The end.
Admittedly, the last part is unlikely.
Ben, I appreciate your in-house input, and your noted difference between dealing with long-unexamined applications and those long pending due to multiple RCEs or continuations. But if the latter were given office actions promptly after each re-filing they would soon get very expensive for such applicants. Also, the PTO does have authority to sanction filing serial papers for delaying tactics, and prosecution laches case law, even though it almost never uses either.
Translation: “Wah.”
Once you have “done your best,” and there is nothing more to do, all future effort by the Patent Office should be easy, not expensive, and certainly quick.
There is NO SUCH THING as “wearing down an examiner to get an allowance.”
“and there is nothing more to do, all future effort by the Patent Office should be easy, not expensive, and certainly quick.”
Lelz, “now that you did your best and assembled 200 pieces of good art now sorting through them for all the ten thousand different ways of claiming this giganto disclosure should be ez and definitely not days of grunt worklololol”
-Anon, always dreaming of space fully automated luxury communism and how easy everything that gets more complex truly is.
Not so — I am simply talking about once you do your job right the first time, all future revisits are necessarily easier.
This is merely a truth.
Bingo.
Lelz, “now that you did your best and assembled 200 pieces of good art now sorting through them for all the ten thousand different ways of claiming this giganto disclosure should be ez and definitely not days of grunt worklololol”
Let’s be real. Few clients are going to pay for a “giganto disclosure” these days. Moreover, if you do get a “giganto disclosure,” it’ll likely spawn multiple continuations, which will all be much easier to examine because you’ll already have done the grunt work in the original parent application.
Examining continuation applications has got to be some of the easiest work at the USPTO.
IDK, copy and paste can be exhausting.
“ Ben ends up allowing the case because he’s a clerk and his boss has implicitly indicated he must allow something.”
Ben should be fired for not doing his job.
What about when applicant appeals, and then Ben or the Board just reopens prosecution by adding a new reference or new rejection?
I had this happen to a pre-GATT filing. I could not get past the Board to the Federal Circuit because I kept getting bounced back. It was a vicious cycle. The only way out was mandamus, which is not a good option.
If Ben reopens more than once (I do not personally engage in such shenanigans, so we’re talking about some other Ben), you should be talking to the work group director. If they are unsympathetic, they are probably the root cause of your suffering. In which case Paul’s suggestion isn’t helpful either.
…. And hence my call to put teeth into the Petition process.
Not just mandamus. You also have an opportunity to file an APA suit for unreasonable PTO delays, if you don’t wait until after its statute of limitations has expired, as Hyatt did re some of his applications.
One can file an APA suit, but still has to stay on the merry-go-round while doing so. It does not toll anything, to my knowledge. Not many applicants want to pursue two different tracks simultaneously, especially when one track involves the expense of litigation. Nor should they have to do so.
Appreciated, but note that once an APA or mandamus suit is filed, it should get the nearly immediate attention of the PTO Solicitors Office, and they in term seem to naturally often quickly get the attention of the examining group in looking for a possible non-litigation solution.
Not necessarily for a pre-GATT case. What was that secret special designation Hyatt claimed his cases had gotten?
About 50% of appealed, and pre-appealed, cases get re-opened. So expect it. Once. If it happens a second time, pick up the phone and call the TC Director.
You got a cite for that statistic?
I’m not saying I disbelieve you, but it is wildly contrary to my personal experience, so I am curious.