Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights

Feb 1, 2023, is the new deadline for providing comments to the USPTO on this RFC.

Topics: The USPTO invites written responses to the following questions and requests. Commenters are welcome to respond to any or all of the questions.

1. Identify any specific sources of prior art not currently available through the Patents End-to-End Search system that you believe examiners should be searching. How should the USPTO facilitate an applicant’s submission of prior art that is not accessible in the Patents End-to-End Search system ( e.g., “on sale” or prior public use)?

2. How, if at all, should the USPTO change claim support and/or continuation practice to achieve the aims of fostering innovation, competition, and access to information through robust and reliable patents? Specifically, should the USPTO:

a. require applicants to explain or identify the corresponding support in the written description for each claim, or claim limitation, upon the original presentation of the claim(s), and/or upon any subsequent amendment to the claim(s) (including requiring a showing of express or inherent support in the written description for negative claim limitations)?

b. 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?

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)?

d. make clear that claims must find clear support and antecedent basis in the written description by replacing the “or” in 37 CFR 1.75(d)(1) with an “and” as follows: “The claim or claims must conform to the invention as set forth in the remainder of the specification, and the terms and phrases used in the claims must find clear support or and antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description?”

e. require applicants to provide detailed analysis showing support for genus or Markush claims, and require applicants to identify each claim limitation that is a genus, and explain or identify the corresponding support in the written description for each species encompassed in the claimed genus?

f. require applicants to describe what subject matter is new in continuing applications ( e.g., continuation, continuation-in-part, and divisional applications) to explain or identify subject matter that has been added, deleted, or changed in the disclosure of the application, as compared to the parent application(s)?

3. How, if at all, should the USPTO change RCE practice to achieve the aims of fostering innovation, competition, and access to information through robust and reliable patents? Specifically, should the USPTO implement 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?

4. How, if at all, should the USPTO limit or change restriction, divisional, rejoinder, and/or non-statutory double patenting practice to achieve the aims of fostering innovation, competition, and access to information through robust and reliable patents? Specifically, should the USPTO:

a. allow for the examination of two or more distinct inventions in the same proceeding in a manner similar to the practice authorized by 37 CFR 1.129(b), and, if so, consider an offset to patent term adjustment in such cases?

b. revise the burden requirement before the examiner to impose a restriction, and if so, how?

c. adjust the method by which an examiner appropriately establishes burden for imposing a restriction requirement?

d. authorize applicants, in the case of a Markush group, to suggest how the scope of the claim searched should be expanded if the elected species is not found in an effort to present closely related inventions for consideration together?

e. adopt a unity of invention requirement in place of the restriction requirement?

f. revise the current practice of authorizing the filing of divisional applications in a series to require all divisional applications to be filed within a set period of time after the restriction requirement is made final and after any petition for review has been resolved?

g. make changes to the rejoinder practice after a final rejection has been made, such as giving applicants a certain time period after final rejection to provide appropriate claims for rejoinder?

h. limit or change non-statutory double patenting practice, including requiring applicants seeking patents on obvious variations to prior claims to stipulate that the claims are not patentably distinct from the previously considered claims as a condition of filing a terminal disclaimer to obviate the rejection; rejecting such claims as not differing substantially from each other or as unduly multiplied under 37 CFR 1.75; and/or requiring a common applicant or assignee to include all patentably indistinct claims in a single application or to explain a good and sufficient reason for retaining patentably indistinct claims in two or more applications? See 37 CFR 1.78(f).

5. Please provide any other input on any of the proposals listed under initiatives 2(a)-2(i) of the USPTO Letter, or any other suggestions to achieve the aims of fostering innovation, competition, and access to information through robust and reliable patents.

The USPTO also invites public input on the following questions, which are presented verbatim (except for minor changes to internal citation format) as they appeared in the June 8 letter from Members of Congress. Any comments relating to fee setting will be taken into consideration when the USPTO takes up fee setting more broadly.

6. Terminal disclaimers, allowed under 37 CFR 1.321(d), allow applicants to receive patents that are obvious variations of each other as long as the expiration dates match. How would eliminating terminal disclaimers, thus prohibiting patents that are obvious variations of each other, affect patent prosecution strategies and patent quality overall?

7. Currently, patents tied together with a terminal disclaimer after an obviousness-type double patent rejection must be separately challenged on validity grounds. However, if these patents are obvious variations of each other, should the filing of a terminal disclaimer be an admission of obviousness? And if so, would these patents, when their validity is challenged after issuance, stand and fall together?

8. Should the USPTO require a second look, by a team of patent quality specialists, before issuing a continuation patent on a first office action, with special emphasis on whether the claims satisfy the written description, enablement, and definiteness requirements of 35 U.S.C. 112, and whether the claims do not cover the same invention as a related application?

9. Should there be heightened examination requirements for continuation patents, to ensure that minor modifications do not receive second or subsequent patents?

10. The Patent Act requires the USPTO Director to set a “time during the pendency of the [original] application” in which continuation status may be filed. Currently there is no time limit relative to the original application. Can the USPTO implement a rule change that requires any continuation application to be filed within a set timeframe of the ultimate parent application? What is the appropriate timeframe after the applicant files an application before the applicant should know what types of inventions the patent will actually cover? Would a benchmark ( e.g., within six months of the first office action on the earliest application in a family) be preferable to a specific deadline ( e.g., one year after the earliest application in a family)?

11. The USPTO has fee-setting authority and has set [fees] for filing, search, and examination of applications below the actual costs of carrying out these activities, while maintenance fees for issued patents are above the actual cost. If the up-front fees reflected the actual cost of obtaining a patent, would this increase patent quality by discouraging filing of patents unlikely to succeed? Similarly, if fees for continuation applications were increased above the initial filing fees, would examination be more thorough and would applicants be less likely to use continuations to cover, for example, inventions that are obvious variations of each other?

113 thoughts on “Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights

  1. 18

    Why are many of my comments still awaiting moderation?

    1. 18.1

      You may have hit one of several known filters:

      Count filter: (too many post attempts in a given time period)

      Link filter: (too many hyperlinks in a single post)

      George Carlin filter: (deliberate or even inadvertent use in a single or across multiple words of a -greatly expanded- “d1r ty w0rds” list)

      Sometimes (but alas, not often) posts that are caught in a filter may be released.

  2. 17

    Comment on who is the “public” in @Anon Jan 25’s question which I quote :
    “Ben’s emphasis on “the public” is interesting in that it can be taken to be more of a “stakeholders” call than your typical parties involved in the Quid Pro Quo (the applicant and the Patent Office).

    If one permits Ben’s “context,” then one (rightfully) wonders who else may make up this “public” and why are they being inserted into the Quid Pro Quo.”

    The “public” is the general public. The quid pro quo of the patent system is that an inventor can be awarded an exclusive right in return for the publication of the patent or application. The benefit to the public is the dissemination of technical information. This is one of the reasons for the enabling disclosure requirement.

    1. 17.1

      Sorry but no – the Office already represents the general public.

      This is a call to someone other than that.

      1. 17.1.1

        “ This is a call to someone other than that.”

        Your mother, maybe? Seriously, get some help already.

        1. 17.1.1.1

          You are projecting again.

          (feel free to actually make a counter point)

    2. 17.2

      Also, it is an error (a simple mistake) to think that the quid pro quo is the exchange of technical knowledge, as patents are legal (rather than strictly technical) documents, and the grant sets out the ability to share more than what is merely within the patent document directly.

      Certainly “enabling” has the color that you mention, but remember that exactitude is NOT required (that ‘without undo experimentation’ thing).

      1. 17.2.1

        What are you talking about?! It’s not even required that ‘inventions’ WORK as claimed! That went out over 100 years ago! They don’t have to work at all anymore (just look like they ‘might’). People are still getting patents on perpetual motion machines, ‘warp drives’ and all kinds of other ‘nonsense’. This should be very embarrassing to the PTO (but they don’t seem to care). Don’t think these kinds of patents make it through foreign patent offices. Just pathetic!

        1. 17.2.1.1

          Do you have an example (actual number) of one these perpetual motion machines or warp drives? (It’s not that I don’t believe you, but it would be cool to have this exception (exceptional?) example at the ready.

    3. 17.3

      Except now most patent applications get published whether or not you ever get a patent! That’s NOT how the ‘social contract’ is supposed to work. The Drafters of the Constitution never implied that’s how it was supposed to work (i.e. you disclose, whether or not we grant you a patent . . . sucker!).

      1. 17.3.1

        It’s your right not to like it, but the USPTO does not work in isolation. It operates within a worldwide system including the PCT which relies heavily on published patent applications for prior art search. Easy, free and efficient access to this wealth of technical information contained in the databases of patent offices is a tremendous benefit for everybody, including US citizens and organizations.

        In addition, the USPTO relies a lot on the searches carried out by other patent offices, esp. for PCT applications and due to the US duty of disclosure requiring foreign applicants to disclose prior art cited by foreign patent offices.

      2. 17.3.2

        Sadly, francis’ reply reflects a lack of appreciation for the Quid Pro Quo that is at root of your comment, George.

        His “rest of world” is also — at heart — simply NOT correct, as patent law is Sovereign Centric law (even with international treaties – and corresponding US implementation law by Congress).

        Further still, if one is NOT engaging in any “rest of world” Sovereigns, the path of a Non-publication request is available (and is vastly under-utilized).

        This path preserves the US Quid Pro Quo of the exchange of a basket of personal property rights in exchange for Publication — in direct contrast to other Sovereigns’ choice of a chance for patents rights in exchange for publication.

        One very much still controls that choice, and it comes down to whether or not one is willing to accept the Quid Pro Quo of Foreign Sovereigns. If one is willing to do that, then one relinquishes the (better) Quid Pro Quo of the US Sovereign.

        1. 17.3.2.1

          Exactly! Only way to go now, until patents gain back the value and ‘meaning’ (i.e. ‘breadth’) they used to have 100+ years ago! It’s all just a ‘racket’ for lawyers and a ‘all you can steal’ buffet for big corporations and monopolies who can steal and use anything they want now! The American inventor has to fight back now, by using trade secrets, PERPETUAL ‘patent pending’ notices, rapid market penetration and trademarks much more (if and when possible). If you can’t commercialize and market it ‘yourself’, don’t bother with a patent! They are useless and worthless for independent inventors now. An independent inventor can no longer afford to enforce even one patent, much less a dozen! So what’s the point of the whole IP system now? There is none. It doesn’t work anymore (at least to the benefit of the inventor). An artist in the street can make more than an inventor now!

  3. 16

    Interesting. At 10.2.2.1.1 John says that most EPO objections would stand, also in the USPTO and that of the Big Five Patent Offices, four issue similar objections but the other one (the USPTO) is out of line with the other four. In reply, Ben, from inside the USPTO says that these objections formulated outside the USA are not “defensible” under US law.

    Is that right, I wonder. If it is, it might be because all the other of the Big Five Offices operate under civil law, with the tribunal deemed to have the knowledge of the person skilled in the art.

    In that case then, harmony between USA and ROW, in the enquiry into patentability is a chimera, impossible to achieve.

    1. 16.1

      You missed a “not” in your first sentence (as Ben’s response appears to strengthen John’s comment); but then you jump to wearing your EPO Uber Alles spectacles again and insert non-sequitors.

      Why would anyone expect “harmony” when it is fully known that the different Sovereigns have chosen differently on a number of wrinkles?

    2. 16.2

      As noted in my comment, my statement is specific to certain areas of prosecution. The EPO rejections I see typically dismiss portions of the claim outright (based on Article 52, I believe), and the treatment of the remaining limitations is both incomplete under US law and unhelpful because the novel feature is typically part of the material that was dismissed. So I don’t think this particular difference is rooted in common vs civil law.

      1. 16.2.1

        OK. Makes sense.

    3. 16.3

      The rejections from common law jurisdictions (AU & CA) tend to be essentially the same as from civil law jurisdictions (EP & JP). I really do not see a common law vs civil law split. I see a USPTO vs every other patent office split.

      1. 16.3.1

        OK. I am persuaded.

  4. 15

    Examiner bros, is it the case internally that cases which are on patent prosecution highway or Track 1 (special) cases get put on the “expedited” tab when the first normal amendment comes in (not a after final amendment but a normal pre-final action amendment)? Did this change recently? I thought they got put on the normal amendment tab when normal amendments came in during those “special” cases? This is some sht, it makes you have to work on that whole amendment super fast.

  5. 14

    Examiners don’t need new sources of prior art….they need to interpret the prior art they already have correctly, and have properly determined that the reference in front of them is actually prior art in view of the earliest filing date the application is claiming priority to.

    1. 14.1

      Question: is a claim deemed always to be entitled to the earliest declared priority date, regardless where in the world that priority filing date was created.

      Or is it for Applicant to demonstrate that the claim is entitled to a filing date in, say, Korea, one year earlier than Applicant’s first USPTO filing date?

      I ask because I assume that Examiners ought to cite as prior art, ab initio, anything with a publication date earlier than Applicant’s earliest US filing date, and that it is Applicant’s burden to show in response that the claim is entitled to the foreign “priority” date.

      Or with a c-i-p, are all claims assumed, ab initio, to be entitled to the parent filing date, or the c-i-p filing date?

  6. 13

    Which section of the Patent Statute requires that patents be robust and reliable?

    Sounds like they are describing a coffee (robust) and public transportation (reliable). What they really mean is easy to get around.

    You have to give it to the dems, their euphemism game is strong.

    1. 13.1

      +1

    2. 13.2

      It’s in the Constitution bruh. “securing”.

      1. 13.2.1

        “Securing for limited times” is in the Constitution. Robust and reliable is not. What did it mean at the time of drafting. One meaning today is “protect against threats; make safe.”

        The exclusive right is protected. The Constitution does not put qualifiers on the protection.

        1. 13.2.1.1

          Note as well what is being “made safe,” or secured: the exclusive right (a negative right which is not the same as a “right to make.”

          Those understanding innovation — especially improvement innovation should readily recognize why (one can innovate over and above existing rights of others, to which the innovator does not have a right to make the base item from which the innovation stems from

  7. 12

    I would point out again that I often get the same claims allowed in EP, CN, KR, JP, and the USA.

    So, where is the quality problem?

    The biggest way to improve quality is to go back to TSM and perform an extended search like for the EP + PCT. Do a search of that quality and go back to TSM and quality will soar.

    1. 12.1

      So, the narrative that the USA has these horrible claims and horrible patent quality just doesn’t stand up to scrutiny.

      1. 12.1.1

        How many of your patents are ‘enforceable’ against anyone, especially the rich and powerful? They’re NOT, are they? None of your great ideas are worth anything, are they? Have you ever filed an infringement suit against a large entity? Probably not b/c you don’t have the money to do that. Have millions to spend doing that? You’re all hat & no cattle!

        1. 12.1.1.1

          “ None of your great ideas are worth anything, are they? ”

          This comment was worth the laughter so you do the math. [preserved for eternity]

        2. 12.1.1.2

          George, what are you talking about? These aren’t “my ideas” but my clients.

          And yes, some of patents have been enforced/litigated. Others have been licensed to large corporations. Other of my patents have been sold to other companies for millions of dollars.

          Etc.

          1. 12.1.1.2.1

            “These aren’t “my ideas” but my clients.”

            “Other of my patents have been sold to other companies for millions of dollars.”

            LOL!!!

    2. 12.2

      Patent quality? The FR notices actually seem quite unconcerned about patent quality. The impetus here is, in the PTO’s words, to “execute on the President’s drug pricing agenda,” not to address any particular problem with patent quality.

      1. 12.2.1

        Yep.

      2. 12.2.2

        Good point. It is distressing how thoroughly this administration appears to have convinced itself that tinkering with patent law is the key to bringing down prescription drug prices. Like a drunk searching for his keys under the lamppost because that is where the light is better

        1. 12.2.2.1

          “Like a drunk searching for his keys under the lamppost”

          B-b-b-but what about the d-d-d-deficit?

          1. 12.2.2.1.1

            ^^^ the epitome of a strawman, given that no one here has mentioned any notion of the political point of the deficit.

            Maybe you and sarah can hang out together…

    3. 12.3

      Actually I often now get what I consider to be reasonable claims allowed in EP and JP (based on the prior art and evidence in the application), while the US examiner rejects even very narrow claims for lack of written description and enablement. Maybe biotech/pharma is different than your area, but this has happened now in most of the recent cases I’ve seen. Incidentally, the JPO is strikingly better in my experience at finding art; maybe the USPTO should talk to the JPO about how they do their searches at least in biotech/pharma.

      1. 12.3.1

        I agree with all of this, especially the part about JPO finding better art than the USPTO finds. I sometimes wonder if US patent quality would not be improved by simply requiring US applicants to get clearance from one of EPO, JPO, or KIPO and then granting the corresponding claim scope in the USPTO (a sort of PPH on steroids scheme).

        1. 12.3.1.1

          “Like a drunk searching for his keys under the lamppost”

          Tell us more, Greg.

  8. 11

    >>>6. Terminal disclaimers, allowed under 37 CFR 1.321(d), allow applicants to receive patents that are obvious variations of each other as long as the expiration dates match. How would eliminating terminal disclaimers, thus prohibiting patents that are obvious variations of each other, affect patent prosecution strategies and patent quality overall?

    This again would be horrible. Variants of the claims are needed because the claims may contain elements that are not by some devices.

    Notice that all these items (almost all) put more burden on the applicant. So, this giant federal agency’s solution to improving their quality of examination is to shift the burden to the applicant.

    I figured that this Democratic Director would come up with some horrible plan like this.

    1. 11.1

      This is atrocious. Looks like Joe Matal is writing regulations again.

  9. 10

    >>>1. Identify any specific sources of prior art not currently available through the Patents End-to-End Search system that you believe examiners should be searching. How should the USPTO facilitate an applicant’s submission of prior art that is not accessible in the Patents End-to-End Search system ( e.g., “on sale” or prior public use)?

    This is so anti-patent. It is an attempt to shift the burden of finding prior art to the applicant rather than the USPTO. The PTO is supposed to be staffed with experts in areas of innovation. They are supposed to be the ones to find prior art. The applicant is not.

    1. 10.1

      I don’t necessarily disagree with you, but there have been times in my career where it certainly seemed like the USPTO was missing some bodies of art that may have avoided larger downstream issues. I think that it’s also fair to recognize that there are sometimes fields or pockets of products that haven’t been particularly art heavy, and the risk of pulling stuff out of the public domain is non-trivial.

      As one example, I was involved as the junior grunt litigator on a case early in my career that involved a patent covering a relatively simple piece of exercise equipment. The universe of patents/published applications was pretty thin, but we lucked into some photos in an old magazine and some tradeshow pamphlets that predated the patent at issue by maybe a decade.

      I’d also suggest that a lot of the public debate and legal fights around business methods (including a lot of those that wound up taking on a subject matter eligibility bent) could have been short circuited by obviousness rejections that involved art from business case studies or other business school texts. Certainly a lot of the claims and applications I saw in the mid-late 2000’s that were little more than “existing process, but now on a computer” would have been resolved more efficiently.

      I think it’s an open question whether a more robust evaluation of repositories of open source code would add clarity to the scope of claims in situations I see now where there isn’t a consistent nomenclature for the structure or operation of the software baked into the claim.

      1. 10.1.1

        The applicant already has a duty to disclose known references.

        The extra work on the prior art searches must fall on the USTPO. They must be the experts in the different areas. The applicants simply can’t do it for any reasonable cost.

        Plus, it is simply not feasible to have the applicant have a prior art responsibility. How would that ever be policed? How would that play out in litigation? Just a nightmare.

        1. 10.1.1.1

          I think I’m reading this particular prompt differently than you may be – I read it as “hey, are there are any buckets of art out there that the USPTO doesn’t currently use/have familiarity and expertise with that that it should use/access/be familiar with and expert in”.

          As to the second part of the prompt, with facilitating submission of art by the applicant around public use/on-sale issued (presumably known to the applicant – I don’t read that as asking to impose a new burden, but rather a recognition that there are situations where a clear, sufficient mechanism to deal with disclosure obligations while differentiating between the aspects of an evolving product that are barred and those that aren’t would be nice.

          I agree with you that burden shifting to the applicant beyond the existing duties is problematic for a host of reasons, but this particular request strikes me as not that.

          1. 10.1.1.1.1

            Beyond the existing duties… not that.

            Do you realize that “asking again for anything already existing to be done is a bit nonsensical?

            1. 10.1.1.1.1.1

              You have to be kidding me. Create a duty on the applicant to identify “sources of prior art” that are not in “Patents End-to-End Search system”.

              So, an applicant has to figure out the USPTO’s search system and identify “sources of prior art” that are relevant to a prior art search for their patent application.

              This creates a new burden and that is a nightmare for claim validity. A new validity challenge in court: you should have known that a conferences in Russia was relevant to your patent application and that the “Patents End-to-End Search system” did not cover those conferences.

              Let’s be clear here. The USPTO is a huge government agency that should be competent to perform prior art searches. There is a special case where the applicant may know specifically of references that they should disclose. But the USPTO needs to be responsible for their own search engine.

          2. 10.1.1.1.2

            You have to be kidding me. Create a duty on the applicant to identify “sources of prior art” that are not in “Patents End-to-End Search system”.

            So, an applicant has to figure out the USPTO’s search system and identify “sources of prior art” that are relevant to a prior art search for their patent application.

            You must be on some drug to think that isn’t a new burden and that it doesn’t create a nightmare for claim validity. A new validity challenge in court: you should have known that a conferences in Russia was relevant to your patent application and that the “Patents End-to-End Search system” did not cover those conferences.

            Let’s be clear here. The USPTO is a huge government agency that should be competent to perform prior art searches. There is a special case where the applicant may know specifically of references that they should disclose. But the USPTO needs to be responsible for their own search engine.

          3. 10.1.1.1.3

            Just a ridiculous comment.

            The issue is whether a new duty should be imposed for an application to ensure that the PTO’s search engine is aware of different areas of prior art that might be relevant to the application…

          4. 10.1.1.1.4

            “I read it as “hey, are there are any buckets of art out there that the USPTO doesn’t currently use/have familiarity and expertise with that that it should use/access/be familiar with and expert in”.”

            Your read is absolutely correct. It’s not tied to any application, and it specifically asks where else examiners should be looking.

            Isn’t it depressing how someone could have such poor reading comprehension, and yet be gainfully employed in your field?

            1. 10.1.1.1.4.1

              Just misrepresent everything as usual.

              1. 10.1.1.1.4.1.1

                It’s clear that you have at least a middle school level of reading comprehension, so perhaps some hand holding will help you across the finish line.

                The Federal Register questions are proceeded with contextual information including:

                A. Prior Art Searching

                The USPTO Letter, section 2(b), indicates the USPTO “is exploring additional technology and resources of prior art.” Patent examiners have access to many resources for searching for prior art during the examination of patent applications. The new Patents End-to-End Search system includes access to U.S. patents and pre-grant publications and more than 76 million foreign patent documents with high-quality English translations and new, improved search capabilities. In addition, examiners search general and technology-specific databases for non-patent prior art and are provided the services of trained professional online search personnel for non-patent prior art searching. See Manual of Patent Examining Procedure (MPEP) 904. In question 1 below, the USPTO seeks public input on specific sources of prior art to ensure that patent examiners have access to the most relevant information. Specifically, the USPTO seeks public input on robust sources of technology-specific, non-patent literature. The USPTO also seeks public input on best practices to ensure that examiners are aware of public use and on-sale activity that is relevant to examination.

                They’re asking for sources of prior art from the public. And nothing suggests that there’s any duty because of course there’s no obligation when they’re just asking for comments from the oublic about where the PTO should look for prior art.

                I suspect that should be clear enough for you, but feel free to prove that your reading comprehension is even lower than I already believe it is.

                1. My comments stand. Re-read them and stop misrepresenting what I’ve said. And anyone with any experience dealing Administrative Law knows that (1) must have been put there with an eye to adding some duty on the applicant’s part otherwise it is merely a request that could be made anytime and does not require any comments or any further procedural steps.

                2. Ben’s emphasis on “the public” is interesting in that it can be taken to be more of a “stakeholders” call than your typical parties involved in the Quid Pro Quo (the applicant and the Patent Office).

                  If one permits Ben’s “context,” then one (rightfully) wonders who else may make up this “public” and why are they being inserted into the Quid Pro Quo.

                  It does not take much “reading between the lines” to surmise that this is a way to give some power to the Efficient Infringers as part of that other ‘public.’

                3. “otherwise it is merely a request that could be made anytime and does not require any comments”

                  It is merely a request! The point of the comments is, drum-roll please, to transmit the information requested from the public to the PTO!

                  Look, this is obviously going no-where, so I’m out.

                  But please, if the PTO rolls out a program requiring applicants to identify prior art sources using this FR entry as the Notice of Proposed Rule making, remind me of this exchange, and I will withdraw my disparagement of your reading comprehension, admit that you were right, and acknowledge that I’ll never be as wise as the great NWPA.

    2. 10.2

      You should be happy to show anything relevant, especially anything that’s very similar to what you’ve already done. It’s not a shell game or hide & seek. If you manage to hide something from an examiner, it means your patent will be worthless later, if someone finds what you intentionally hid. All that time & money just wasted on an invalid patent. A patent is only good & ‘strong’ if NO ONE can ‘ever’ find anything similar. Not worth filing for anything else (that’s already been invented (or described before)! That’s YOUR job, so you don’t waste your time & money getting a ‘legally worthless’ patent. I always provide whatever I can find. Besides examiners hate to use anything YOU give them!!! So always give them the best and closest references you can! They will likely just ignore those and try to find their own (which will be less relevant).

      1. 10.2.1

        Just a ridiculous comment.

        The issue is whether a new duty should be imposed for an application to ensure that the PTO’s search engine is aware of different areas of prior art that might be relevant to the application.

      2. 10.2.2

        Besides examiners hate to use anything YOU give them!!! So always give them the best and closest references you can! They will likely just ignore those and try to find their own (which will be less relevant).

        This is distressingly true in my experience.

        1. 10.2.2.1

          I don’t think that it’s about hating to use applicant provided references but rather simply reading them differently.

          A cursory review of a reference by two patent professionals will very frequently result in two very different opinions. I was recently working with another examiner, and the reference he favored looked like trash to me, and the reference I favored looked like trash to him.

          Of course a conversation about the references will hopefully cause the opinions to converge, but one never has a conversation through an IDS sheet.

          1. 10.2.2.1.1

            My experience is the same as Dozens’. I have just a few quick thoughts in response to your reply.

            (1) The USPTO has lots of examiners, and those examiners examine a lot of cases. I am sure that the explanation that you offer is true for some of them.

            (2) Notwithstanding #1 above, I have several times submitted 3rd party art in both this country and others. When you submit a 3rd party IDS, you submit a claim chart explaining the relevance of the submitted art to the claims. This is, obviously, unlike the usual IDS. I have never made a 3rd party submission that was not a dead-on anticipation, but I have also never seen an examiner make a 102 based on my 3rd party IDS, even though the claim chart is 90% of the rejection already written up. This bespeaks something more than just a different first-glance response to the art.

            (3) When I make my own IDS submissions to introduce art cited in foreign jurisdictions, I also submit the office action (and translation, where relevant) at the same time as the art. Once again, then, there is an explanation of the relevance of the art, not just an IDS sheet. Only once in my career have a I seen a US examiner adopt the logic of a rejection from a foreign office. I can appreciate that sometimes, the foreign law is different from US law, so that the rejection would not make sense in the US context, but most of those rejections that I have seen from EP and JP would make as much sense under US law. The fact that only once have I seen a US examiner apply the foreign examiner’s reasoning in the US context suggests to me that more is going on than just “[a] cursory review of a reference by two patent professionals… result[ing] in two very different opinions.” This seems more consistent with an active aversion among US examiners to apply art that they did not turn up themselves.

            (4) Finally, it is worth noting that the US is kind of unique in this respect. The rejections that I get from the EPO for a given application usually look much like those from the JPO, which look much like those from KIPO, which look much like those from the MX-INPI (etc). It is only the US which tends to stand out in a given patent family.

            1. 10.2.2.1.1.1

              “I have also never seen an examiner make a 102 based on my 3rd party IDS, even though the claim chart is 90% of the rejection already written up.”

              I find that sincerely baffling. I’ve never received a third party submission, and I can’t imagine why someone wouldn’t use it if I found it persuasive.

              “but most of those rejections that I have seen from EP and JP would make as much sense under US law.”

              This definitely depends on your prosecution area. The vast majority of EPO rejections in my area are not defensible under US law. And I generally cannot follow JPO rejections enough to rely on them.

              Your anecdata is surprisingly compelling, but I keep coming back to the production system which so strongly incentivizes examiners to move cases. If an examiner finds a 3rd party submission or a foreign office action reasonable, they have direct financial motivations to use those rejections. The idea that US examiners in particular would resist such motivations based on not being the one to find the art just seems implausible. Perhaps there is some other structural distinction, like US examiners being particularly poorly trained in claim interpretation and mapping. As unflattering as that is, it seems more likely than US examiners leaving money on the floor because they want to use a reference that they found.

              1. 10.2.2.1.1.1.1

                Ben,

                It is no shock at all that you find something that does not fit into your preconceived notions as baffling.

                I am trying to remember a comment of yours that displayed truly critical thinking and not a one of yours can be recalled.

                You are the epitome of a 2d person trapped in a circle unaware of even the possibility of getting out by way of a third dimension.

  10. 9

    Piling such extensive burdens and restrictions on applicants would be incompatible with recent initiatives to expand access to patents for under-resourced individuals.

    1. 9.1

      +1

    2. 9.2

      D.a.m.n. right — big +1.

    3. 9.3

      This is a good point. The desire to bring under-resourced individuals into the patent system, and the desire to improve patent quality are in definite and palpable tension. When those two goods come into conflict, fairness to the general public requires that we err on the side of patent quality rather than inclusion. The initiatives to bring individual inventors into the system should, therefore, be rescinded accordingly. That will be best for all (including the individual inventors) in the end.

      1. 9.3.1

        ^^^ Greg’s “Oh so Martha’s Vineyard” sense of equity in full force (you go eat cake and leave parents to the Realm of Kings).

      2. 9.3.2

        That’s a persuasive observation, Dozens. It reminds me of what Rolls (or was it Royce) said about the cars they were making: that if you have to ask about the running costs, should should not be buying such a high quality car in the first place.

        But here in Germany, I’m thinking that the running costs for an auto of the highest quality are no longer so prohibitive. Lots of ordinary people drive a BMW or Mercedes, these days. Is there not plenty of scope, not yet realised, to make the patent system accessible and worthwhile for SME’s?

        Frankly, I suspect it is the adversarial attributes of English which render the patent game so expensive and so inaccessible to SME’s. Compare inter Partes oppositions at the EPO,under civil law rules. Witness evidence, depositions, cross-examination, hardly ever play a role, not least because the tribunal places itself in the shoes of one skilled in the art.

        1. 9.3.2.1

          Here, wear my glasses…

        2. 9.3.2.2

          The very first sentence the professor uttered in my patent law class back in law school ran something to the effect of “if what you want is scientific recognition for your genius, publish your results in Science or Nature. Patents are not validations of your genius. They are business tools meant to serve business purposes, and if you are pursuing a patent for any other reason, you are wasting your time.”

          I think that (a) my professor was correct and (b) most independent inventors are not in any position to use their patents for business purposes, and are therefore wasting their time. You can count on one hand the number of stories where an independent inventor has—since the 1990s—managed to use their independently obtained patent for a useful (i.e., profitable) business purpose.

          Mostly, the involvement of individual inventors in the patent system costs these people at lot of money, but yields no benefit—either to themselves or to the system as a whole. The USPTO is doing no one any great favors by trying to encourage these independent inventors to involve themselves with the patent system.

          1. 9.3.2.2.1

            Can’t really quarrel with any of that, Dozens. But do we need to define the term “independent”?

            I’m asking myself whether somebody like an innovative surgeon or other medical doctor counts as an “independent” inventor. I’m thinking about the inventors of things like stents, prostheses and spinal cages that became the basis of multi-million dollar industries.

            I guess they are not “independent” if they made their invention during their employment.

            1. 9.3.2.2.1.1

              What Greg omits is that the historical fact that the Grand Experiment of the US Sovereign’s patent system was explicitly built to NOT be the playground of Kings (and well-established entities).

    4. 9.4

      That’s all just PR! Nothing will change. It comes down to not having the MONEY to get & enforce patents, not the ‘motivation’ and desire to be an inventor. Women & minority groups aren’t STUPID and greedy (like most men are). They want to get paid for their work and not just get the government runaround!

      The government should be financially supporting its ‘best’ inventors and also help them defend their work against infringers (maybe with automatic infringement insurance included with each patent and using ‘salaried attorneys’ to defend patents), so lower income inventors don’t have to worry about any of that!

      Less than 1% of inventors are any good or of much value! It’s just a fact. But those are the ones the government should be actually helping to issue (rather than trying to block with endless objections), since even one breakthrough invention, could be worth far more to the country than what it might cost to support those select few (actually talented) inventors.

      There are not that many ‘great inventors’ out there, anyways – maybe a few 100 or 1000. Most inventions and patents are just useless ‘crap’ that cost >$20K to get, and only end up making lawyers rich and keeping the PTO’s huge staff employed. Lots of it is basically just ‘busy work’ dealing with 99% worthless and ‘dead end’ ideas.

      The PTO has now turned into a ‘garbage collector’ of random ideas & giant egos, not the ‘gold prospector’ it used to be. We need to focus on the ‘gold’ again and forget all the junk (which most of the time doesn’t even work as claimed and will never be commercialized or ever used by anyone).

      Only 10% or less of patents now will ever be used (or stay valid) and so they should not get issued in the first place. Those that do issue should be valid and also ‘easily enforceable’ (as in a few days in court)!

      Way too many patents are being ‘shoved’ out there now, most of them worthless. We need to stop wasting all that time and money and put it to much better use, supporting actual valuable R&D. We need to ‘require’ inventions to offer something ‘significant’ with little overlap with things before and certainly other patents.

      If an invention is ‘unique’ (like the Rubics cube or string trimmer), then it’s unique and there’s no need for ‘endless debate’ about it! If an invention passes the ‘duck test’ of being unique, then it’s ‘new’ – period! No further legal mumbo-gumbo or endless and worthless ‘semantic analysis’ should be required. A good and original invention and patent is one that’s pretty obvious when someone sees it and should get the protection of the government that issues it. It’s as simple as that and is really what the Founders intended. They didn’t want patents only for the rich and powerful. Why would they have been OK with THAT??? How can anyone in Congress think that what we have now, would have been OK with them? It wouldn’t! Most of PTO policy today, be seen as totally unconstitutional, since less than 1% of Americans can afford to use it to obtain the rights they were promised under Article I, Section 8. Since when do Constitutional ‘rights’ run out, as soon as your money runs out? Only with patents does that happen! No money – ‘no patents for you’ – even if you’re a genius (like Tesla) – the U.S. government doesn’t ‘really’ give a damn! It just pays lip service to inventors, that’s all! It’s all a ‘cynical lie’ now!

      1. 9.4.1

        “Women & minority groups aren’t STU PID and gre edy (like most men are).”

        Ah, I see, so it’s only the ebil white straight hetero mens that are “stu pid and gre edy” lol o lo l. Wish I woulda known. If only someone coulda let me know, maybe someone like a leftist mind master could have performed this duty. And this ebil white stra ight hete ro mans being stu pid and gr eedy is why we’re “launching programs” to get the others to “catch up” to the ebil ones. #themoreuknow

        “The government should be financially supporting its ‘best’ inventors ”

        But hang on, what about the minorities and women bro? Or are they the “best” you have in mind? And is this just another gubmit program bro?

        “Less than 1% of inventors are any good or of much value! It’s just a fact.”

        Maybe in your art bro. The bros in my art seem to be doing valuable stuff in nigh every app.

        “But those are the ones the government should be actually helping to issue (rather than trying to block with endless objections)”

        Do a little of column a, and a little of column b. Truth is, getting them issued is ez cakes. They want something of value issued, and they like to go step by failure step to get the most value issued. That’s their preference bro.

        “so lower income inventors don’t have to worry about any of that!”

        If they’re truly the “best” inventors they most likely won’t be “lower income” for long bro.

        “maybe a few 100 or 1000. ”

        My art alone involves tens of thousands. Pharma is the same. Chemistry is the same. On and on. You’re thinking about some fantasy stuff that isn’t much involved in the useful arts.

        “We need to stop wasting all that time and money and put it to much better use”

        People can stop filing and just publish their work (or keep it sec rit) anytime bro.

        1. 9.4.1.1

          Oooooh – you fired on the Woke theme….

        2. 9.4.1.2

          I’m NOT your ‘bro’ – bro!!! That’s for sure! Sorry, you sound ‘especially ignorant’ on all of this.

          1. 9.4.1.2.1

            Gettin ya arse handed to ya are ya? lolol. sux bruh.

      2. 9.4.2

        So are you proposing patents be granted only to “first in class” inventions? Is your “unique” equivalent to “super novel?”

        I do agree that many inventions are obvious once they are invented by another, with the benefit of hindsight.

    5. 9.5

      Exactly. A cynic might also think that the USPTO’s focus on helping individuals to file/prosecute their own applications may be so that they can guide them into robust and reliable (read narrow) claims.

  11. 8

    Suggestion : change the composition of the panels responsible for review of pre-appeal briefs so that they no longer include the primary examiner responsible for the rejection. Having the primary examiner within the panel is a conflict of interest. And because the primary examiner has detailed knowledge of the case, he/she can have overwhelming influence within the panel.

    1. 8.1

      The pre-appeal and/or appeal conference should not include any examiner involved in the examination. The problem is particularly acute in TC’s and AU’s where the junior examiner is merely acting as a scrivener for an SPE or primary who is insisting on all claims rejected so they can sign without having to actually review the rejections. In that case, it’s automatically two votes for sending to the Board and in TC’s and AU’s that are simple majority vote of the panel, as opposed to giving a QAS or other member veto power, the whole exercise is simply a waste of time, money, and effort.

      1. 8.1.1

        I agree with Breeze here.

        There may have been a “shock” factor when first introduced, as the program was wildly successful.

        It has degenerated to the point that I have had (senior) examiners attempt to game the system with the examiner choosing two of his pals and not even including the examiner’s supervisor.

      2. 8.1.2

        When an appeal panel is composed of a junior and their primary, the third party is always a SPE.

        And the SPE is ultimately the one who decides whether the appeal proceeds. No junior and their primary ever outvotes a SPE on an appeal panel. It doesn’t work like that.

        1. 8.1.2.1

          Is that written down somewhere? (See 37 CFR 1.2)

        2. 8.1.2.2

          Is that for every TC/AU? The process is, from Applicants perspective, entirely too opaque to be of any value these days. As noted by anon, it was useful in the beginning but its effectiveness has declined substantially to almost the point of futility. The PTO’s original comments in the FR notice were that a notice of panel decision to proceed with a full brief followed by a subsequent re-opening upon the filing of the brief was envisioned as a “rare” occurrence. I can assure you from personal experience it is not.

          All pre-appeal and appeal conferences should be open to Applicant. If not for participation, at least for transparency. And to prevent the sort of nudge-nudge-wink-wink shenanigans that very clearly go on during the conferences.

          1. 8.1.2.2.1

            Or at least require an explanation of what the decision was based upon. What are the issues still appealable? What issues, if any, are not? If not appealable, is it because it was considered that the rejection is inappropriate?

            1. 8.1.2.2.1.1

              Isn’t what you are asking for basically for the Office to adhere to 37 CFR 1.2?

              1. 8.1.2.2.1.1.1

                That seems to be applied to applicants and their representatives only…

        3. 8.1.2.3

          “When an appeal panel is composed of a junior and their primary, the third party is always a SPE.”

          That’s obviously not correct. The third is a QAS (director level guy) or other than a SPE individual. Tho usually the primary drops out and the pre-appeal is junior+SPE+QAS (or other filling in for QAS). At least that’s how it was back when I was doing my pre-appeals back in the dinosaur days when I still got appeals, and it is how all the ones I hear about nowadays happen.

          1. 8.1.2.3.1

            The completely ad hoc composition of pre-appeal/appeal conference panels from TC to TC and AU to AU has caused the entire process to become useless. That can only be fixed by allowing applicants to participate.

          2. 8.1.2.3.2

            I’m not sure why you think my statement is “obviously” not correct, but I suppose I could be wrong. I’ve never heard of an appeal conference without a SPE, my TC expressly requires a SPE, and MPEP1207.01 is pretty clear that a SPE should be in every appeal conference.

            1. 8.1.2.3.2.1

              “I’m not sure why you think my statement is “obviously” not correct, ”

              Because me and a hundred other examiners I know do a different procedure regularly. That’s why it is “obviously”.

              “but I suppose I could be wrong. I’ve never heard of an appeal conference without a SPE, my TC expressly requires a SPE, and MPEP1207.01 is pretty clear that a SPE should be in every appeal conference.”

              Right, the primary drops out, and the SPE goes with the junior (or sometimes the primary may go instead of junior, but usually the dude that wrote the action goes as they know best what is happening in the rejection) to talk to a QAS/director level/fill in guy (way way back a board member themselves might fill in occasionally, and sometimes now an acting SPE that is getting into QAS work will fill in). The spe and the primary have to agree that the rejection shall stand prior to any of this happening (tho the spe will often not just overturn the primary on a whim). This procedure being because, iirc while it is formally an appeal from the primary’s signed action any appeal basically gets at least a glance over by the SPE who needs to basically approve it being allowed to go to appeal.

              “The completely ad hoc composition of pre-appeal/appeal conference panels from TC to TC and AU to AU has caused the entire process to become useless. ”

              I’m not sure why breeze thinks this, as you’re just getting 3x patent professionals to review it (two of which will be experienced at patents generally at least, minimum). There’s no magic to be had by setting forth some special composition that you have in mind most likely. If you’re wanting “muh legal expertise” present, then you need to have them mandate the involvement of a lawyer.

              1. 8.1.2.3.2.1.1

                “…then you need to have them mandate the involvement of a lawyer.”

                Haven’t I said more than once that having applicant’s rep attend the conference, even as just an observer, but preferably as a participant, would be an improvement?

    2. 8.2

      That’s true, but just one of the many problems and conflicts of interest present in the PTO today. In fact, I believe there is outright corruption and collusion going on there that needs to be exposed and probably investigated by Congress and/or the FBI! There seem to be a lot of ‘rogue’ actors at the PTO now. They are the same ones that cam up with the ‘super secret’ SAWS program that ran for 20 years, with them denying its existence for all those 20 years (even to attorneys). Don’t think Congress ever approved THAT or gave them permission to run it. But only an FBI investigation can reveal the truth about who was responsible for it & they don’t seem to want to touch it (which is really strange).

      The ‘SAWS scandal’ & its cover-up must have gone way up there, for no one to still want to talk about it or say who all got blacklisted by it or even how many! How many inventors got screwed and literally ‘blacklisted’ by that one? They just claim ‘not many’, but some say it was in the 1000’s! But it’s now been replaced with a totally new ‘unwritten’ and equally secret policy, that may have a less formal blacklist involved too. Would explain a lot, that’s for sure.

  12. 7

    1) given the previous article, maybe old copies of “Isaac Asimov’s Science Fiction Magazine” and “Amazing Stories” 😉

    And tbf, “Minority Report” had a lot of cool tech.

  13. 6

    “Ensure the Robustness and Reliability of Patent Rights”? Might as well give vitamins to a dead man.

    1. 5.1

      Julie,

      You had me with your very first sentence.

      Kudos

      1. 5.1.1

        +1

    2. 5.2

      Excellent submission, Julie. I particularly liked procedural errors 3 and 5. I was blindsided by error 5. The examiner felt the applicant had enough patents, and did not need another one.

      1. 5.2.1

        Or it was just too ‘broad’ that it could ‘impact’ on large corporations and monopolies (that are the PTO’s best and highest paying customers and control Congress)? Wouldn’t want that now, would we? The ‘big guys’ wouldn’t like that at all. Their (and the PTO’s) motto is ‘No more ‘broad patents’ that might actually FORCE big and rich guys to pay for what they want to use!”

        “No more broad and strong patents . . . no more worries (and more money for us)! Screw ‘inventors’. They’re a dime a dozen anyway. Like starving artists! There’ll be one born every day. We’ll never run out! Besides, what are they going to do about us stealing their ideas? Nutten! LOL”

  14. 4

    Thank you, Dennis, for picking up this topic. As a former USPTO Quality Assurance Specialist, here’s some comments I submitted.

    1. 4.1

      Did you know about the SAWS program? If so, what did you do about it?

      1. 4.1.1

        Is that going to be a part of your lawsuit?

        When will we get to see that lawsuit?

        I am (no snark) really looking forward to seeing your lawsuit (hat and cattle and all).

  15. 3

    You want to insure the robustness and reliability of patents?

    No need to enact this Big Tech / China / infringer wish list.

    From from it. Instead, simply do these:

    1. Have the Senate take back the Constitutional patent eligibility authority they’ve inexplicably allowed SCOTUS to take from them.

    2. Require that the CAFC stop acting like law-and-rule-writing legislators and put their judge robes back on.

    3. Immediately replace the Big-Tech and China-loving, patent-protected-innovations-be-d.a.m.n.e.d. Vidal with another Iancu-like Director.

    4. Abolish the Patent Death Squad PTAB.

    In addition, if any amount of this unnecessary c.r.a.p. is enacted, you’re going to see a fully and completely justified and understandable mass resignation of the already-over-worked-Examiner-corp the likes of which you can’t even imagine.

    SCOTUS, the CAFC, and the PTAB are the three reasons for the unreliability of U.S. patents.

    The only reasons.

    And patent robustness?

    Unsupported hand-waving and dust kicking.

    A straw man.

    A red herring.

    A lie.

  16. 2

    Here’s a thought! How about we start replacing most patent examiners and patent attorneys (except the really good ones), with computers and AI?! That should become possible in less than a decade now. At least we’d finally get some actual consistency (between examiners and groups), ‘blind’ justice in the courts (regardless of damages sought), and a whole lot less hypocrisy too.

    Not only would it save a ton of money for the PTO and patent applicants, it could help make patents ‘bullet proof’ again under the statutes, by reason of worldwide prior art searches, not just patent searches and contrived ‘combinations’. Better yet, this could all be done in minutes – not weeks, months & years and be done with mathematical precision and 100% consistency too, thereby ensuring validity ‘after issuance’ too. It could also make possible patents in as little as 24 hours (if no problems found), as they should be in the 21st century (rather than YEARS, like still now) and maybe even for as little as $100 or less (for computer time & examiner ‘final review’) as long as changes are not required or the filing is just rejected. What wouldn’t there be to like about that?!

    Final decisions would still be made by human ‘reviewers’ and appeals would still be allowed and be made to humans too. But most PTO employees would become quality control and customer service staff, there to serve the interests and needs of ‘inventors’ (their customers), not big corporations, monopolies, lawyers and/or (paid off) members of Congress! I like that idea, don’t you?

    We could also let computers handle most of the hard parts of patent litigation – except for the damages part! That could still be decided by juries. That could cut litigation costs by a factor of 100 at least! I’d invest real money in THAT! Let’s let computers have a stab at it, since it’s obvious humans can’t handle it anymore and inventors just keep ‘getting screwed’ now by our current ‘corrupt system’ that protects corporations but not inventors!

    And we’d better DO all of the above soon . . . before China DOES (because they don’t worry so much about lawyers)! Maybe I’ll even suggest it to the Chinese! LOL!

  17. 1

    Wow. Meet the new Undersecretary.

    1. 1.1

      We’ve talked about this A. When the ex parte appeal backlog is high it’s difficult for the rank and file corp to get an appeal to the Bored. When it’s low it’s easy peasy.

      1. 1.1.1

        ^^^ are you implying a “move the deck chairs on the Titanic” type of thing?

        Asking for a friend.

        1. 1.1.1.1

          How about just ‘corruption’ and maybe even ‘RICO fraud’ going on at the PTO now? If they deny patents that meet all statutory requirements for allowance (even if broad), just because they don’t like them and don’t want to issue them, then I’d say that’s ‘deliberate fraud’, wouldn’t you?

          If they are intentionally BLOCKING certain (potentially very valuable) patents from issuing, I’d say that’s ‘criminal fraud’, wouldn’t you?

      2. 1.1.2

        Another explanation for why the PTO fought so hard in the Hyatt case to maintain it’s right to multiple do-overs by re-opening.

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