Note from Crouch: I included “chronic” in the title of this post as a reference to an antiquated reference to marijuana, and did not intend to claim that this issue is one that the court is repeatedly facing.
United Cannabis Corporation v. Pure Hemp Collective Inc., Docket No. 22-01363 (Fed. Cir. 2023)
This case is still pending before the Federal Circuit, but I found it interesting enough for a preview.
United Cannabis holds a broad marijuana patent – US9730911 – with claims directed to a liquid cannabinoid having 95% of either THC or CBD.
5. A liquid cannabinoid formulation, wherein at least 95% of the total cannabinoids is tetrahydrocannabinol (THC).
10. A liquid cannabinoid formulation, wherein at least 95% of the total cannabinoids is cannabidiol (CBD).
In 2018, United Cannabis sued Pure Hemp for patent infringement and Pure Hemp responded with a Walker-Process antitrust counterclaim for asserting a patent known to be invalid. The defendant also argued the patent should be held unenforceable due to inequitable conduct during prosecution.
The inequitable conduct claim was based upon a failure to provide material references to the USPTO as required under 37 CFR 1.56. In particular, the Cooley LLP prosecuting attorney admitted to copying material from prior art into both the Abstract and the Detailed Description of the patent specification; but did not cite the reference within the patent document or disclose that reference to the USPTO for consideration. Although not identical, the reference (Whittle – U.S. Pat. Pub. No. 2004/0033280) apparently disclosed a liquid with 88.9% CBD or 95% CBD+THC. So, quite close to what was claimed. In deposition, the prosecuting attorney apparently explained that the copying was done to speed the process and save time – and is a recommended common practice. It also turns out that the same law firm – Cooley – represents GW-Pharma (the owner of the Whittle prior art) in patent prosecution. And, Cooley attorneys had argued to the USPTO that GW Pharma invented a liquid formulation with 95% purity CBD.
The litigation ground to a halt in the midst of discovery when United Cannabis filed for bankruptcy. But, the bankruptcy case was eventually dismissed based upon the illegal nature of the business venture (illegal at the Federal level). At that point United Cannabis decided to drop its infringement case. The parties jointly agreed that the patentee would dismiss its claims with prejudice, while the defendant dismissed its counterclaims without prejudice.
Although the merits had been resolved, the accused infringer was a bit upset for having to litigate the pointless lawsuit, and consequently filed a motion seeking attorney fees under 35 U.S.C. 285. Section 285 allows the district court discretion to award reasonable attorney fees to the prevailing party in “exceptional cases.” In a terse opinion, the district court denied the fees motion: finding (1) the defendant was not the prevailing party because of the jointly-agreed dismissal and (2) the facts of the case were not shown to be “exceptional” since the dismissal occurred before the facts had been determined.
This case is now on appeal before the Federal Circuit. The patentee has admitted that the district court erred in its prevailing party analysis, but argued that the district court was correct to find that the case was not exceptional. The appellant argues instead that the copying into the critical portions of the application: detailed description of the invention and abstract create an inference of both materiality and intent sufficient for an exceptional case finding. For its part, the district court only provided a cursory analysis of these issues without delving into any of the evidence presented. The briefing also argues that “Cooley attorneys also have a policy of withholding references until after the first office action, in direct contravention of patent office guidance.” Still, in this case, the references were never submitted prior to issuance. The brief goes-on to remark that “in academic circles, it is referred to as plagiarism.” And, even without rising to the Therasense level of inequitable conduct, should be seen as creating an exceptional case.
James Gourley from Carstens & Cahoon argued on behalf of the defendant-appellant. (Brief). Cooley’s Orion Armon argued on behalf of the Plaintiff-Appellee. (Brief).
What do you think: Do the facts as stated here create an exceptional case for the accused infringer?
I am more troubled by the ethics of prosecuting applications to the same subject matter in the same firm. That seems like a recipe for disaster. One can imagine a situation arising where one needs to attack the patent/application of one party to secure a patent for another.
“And, Cooley attorneys had argued to the USPTO that GW Pharma invented a liquid formulation with 95% purity CBD. So, in the words of”
The text is incomplete, so I may have missed the point of this sentence. But, it appears that Cooley was representing two different parties claiming exactly the same subject matter, not just overlapping subject matter.
McCabe: “ I don’t see this record as proving inequitable conduct occurred by clear and convincing evidence.”
That’s nice. Frankly, if this isn’t inequitable conduct on Cooley’s part, then for all practical purposes there is no such thing as inequitable conduct.
Admittedly withholding prior art because the likelihood of getting a patent is believed to be higher seems like … a problem.
But go ahead and circle the wagons in defense of the worst actors in the business! You always impress everyone when you do that.
“Admittedly withholding prior art because the likelihood of getting a patent is believed to be higher seems like … a problem.”
Except that’s not the case here. Perhaps you confused “admission” with “assertion” in your hurry to side against the patent holder.
While certainly an act of omission did occur, it may well be very easy to check this practitioner’s history to see if this was habit or maybe simple error.
In Section 2 of this thread I asked a question about dodgy conduct:
“But will it not continue unchecked, rampant even, until such time as the courts signal that they deplore it too and will sanction it proportionately?”
WT kindly answered thus:
“It isn’t up to the Courts to manage the USPTO’s management of workload.”
It seems tht I failed to make myself clear. What I had in mind is the general concept of “equity” and that under it “cheats shouldn’t prosper”. If the courts detect cheating, ought they not to punish it? So, is it “cheating” to hold back prior art known to be relevant to patentability till after issue of the FAOM? If not, why not? If it is, do the courts have any means to limit the prosperity of such a cheat?
And if it is not cheating, and if the USPTO wrapper nevertheless notes that the belatedly filed art has indeed been duly “considered” by the Examiner, why don’t all zealous law firms do it, not just Cooley?
“ why don’t all bottom-feeding law firms do it, not just Cooley”
Fixed for accuracy.
Your emotion is noted Malcolm. This practice hardly makes the firm a bottom feeder.
Because it is just not Best Practice.
It may well be allowed, and there may well be “Reasons,” but lots of things get done that are not Best Practices and that does not drive an All or Nothing stance.
Also, my reply to you provided more substantive basis than Wt’s. You might learn more without wearing that skirt along with those EPO glasses.
It costs extra to do it this way. And many/most big clients are very cost conscious
Good point — but sadly, I have also heard the rationale the big clients have capped initial filing dollars, and this “extra costs” is a way to avoid that first bucket limit (fee arrangements already too low for that ‘loss leader’ of initial activity).
While ALL of this may well fall into the category of ‘contract for services’ negotiations, NONE of this impugns any ethical violations or misuse of government resources.
Why is review of an IDS more difficult today than it was in the 1990s, that we can’t get the quality examination today that we got in the 1990s?
Regardless of whether an information disclosure statement (IDS) is filed before or after a first office action on the merits, beginning 2021, under the guise of quality improvements, the USPTO loosened requirements for patent examiners to properly evaluate references submitted in an IDS.
The USPTO’s internal quality metrics are driven by the patent examiner’s performance and approval plan (PAP). The quality element of the PAP now permits entry level examiners to treat IDSs with basic, i.e., cursory level review.
Beginning FY2021, the USPTO created their own “non-error based assessment” for quality review of key patent examination functions. This homegrown “non-error based assessment,” is outside Office of Personnel Management’s standards. Nonetheless, the USPTO applies this evaluation standard to review how patent examiners treat IDSs. Under the FY2021 PAP, overlooking the relevance of a document submitted an IDS is not considered as a quality error.
Moreover, the FY2021 PAP downgraded the examiner’s treatment of IDSs from a required task to one of nine OPTIONAL components of compact prosecution. Performing one or more of these tasks can be used to justify the higher commendable or outstanding quality rating.
The FY2021 PAP authorizes USPTO supervisors to give “fully successful” ratings to examiners who routinely fail to properly consider and apply documents submitted in an IDS and to give higher ratings to examiners who only sometimes properly treat IDSs.
These and other downgrades to the quality element of the patent examiners’ PAP were presented by the USPTO to Congress under the guise of a “Roadmap to Improved Patent Quality.”
link to ipwatchdog.com
But according to the likes of (examiner) Ben, they have it sooo rough with like a 5x reduction (in resources?) after a non-final, so it is all the applicant’s fault (blame).
I know I know — many of the more vocal examiners are cognitively impaired.
“The quality element of the PAP now permits entry level examiners to treat IDSs with basic, i.e., cursory level review.”
“Basic” does not mean “cursory.”
You own link shows this.
Full level “consideration” amounts to mere cursory (as Prof. Crouch has previously posted).
You pick the wrong nit, Ben.
I don’t see this record as proving inequitable conduct occurred by clear and convincing evidence. There was no evidentiary hearing, this is all just post-case spin in support of a fee petition. I think the practitioners at Cooley are at the very least entitled to be heard in an evidentiary hearing.
I have seen the plague of alleging inequitable conduct in every case is just as much of a plague as it was 20 years ago. The Office of Enrollment and Discipline takes such claims very seriously, and it regularly investigates practitioners who have been accused of inequitable conduct. It is unfortunate for the Patent Bar that IC claims, many of which are made on the flimsiest of theories, can require the practitioner to defend their professional license at OED, in addition to having to deal with the claim in district court or ITC litigation.
From what I understand, and admittedly I’m not 100% up to date on examiner search tools and practices, the examiner can put all of the references submitted in an IDS into a tool that OCR’s them and then can perform whatever word search(es) they’ve used on the IDS references. Hard to see how “overlooking the relevance of a document submitted an IDS is not considered as a quality error.”
The simple explanation for why the examiner PAP treats “patent examination quality” the way it does is the “career” officials who wrote/write it have no idea whatsoever what actual patent examination quality requires. They have no idea how to evaluate evidence. They have no understanding of the law outside of the “case law cheat sheets” they all “grew up” relying on. And they just don’t care. They know that there are zero consequences for improperly rejecting allowable claims, and that quantity always trumps quality at the PTO, as long as the quantity contains the required amount of rejections and “builds a record.”
B-b-b-but the applicant has to be to be blamed.
(Paraphrasing Ben)
Granted, Ben has walked back his assertions (a bit) being willing to share blame. He is though still convinced that it is correct to blame applicants, regardless of what ever Congress may have actually set in place.
The “career” officials at the PTO have been attempting to shift the blame to applicants forever. Their whining about “low quality applications” has been going on for the past 20-30 years. Of course, “low quality applications” should be the easiest to do a “quality” examination of.
There is no training in the world that the PTO can do that will be effective at achieving “quality” examination as long as the underlying premise of the examiner PAP is: there are zero consequences, and in fact only rewards, for improperly rejecting allowable claims.
As every single “career” official at the PTO got to the level they are currently at by exploiting the examiner PAP system to their advantage, the possibility of any meaningful change is lower than whale scat.
The Office of Personnel Management (OPM) has created standards that sort federal employees’ tasks into varying levels of difficulty (Basic, Advanced, Legal) and uses those standards to evaluate employee performance and to assign GS-levels.
In the world of patents, an example of a Basic level task (one learned by all examiners at trainee levels) would be determining that each Figure is described in the Brief Description of the Drawings. This clerical-type task can easily be accomplished by entry level trainee employees with a minimal amount of training and time, i.e., cursory review.
Advanced tasks are defined by OPM as “the more difficult functions which (a) can be independent performed only by experienced examiners, and (b) require a thorough mastery of “Basic” functions for their comprehension and application.”
“Planning a field of search” and “conducting the search” are more difficult tasks than determining that each figure is described in the specification. Yet planning a field of search and conducting a search are currently evaluated as Basic tasks in the FY2021 PAP.
To improve the quality of the examiner’s searches, and to maintain consistency with OPM’s standards, the USPTO could elevate these important search tasks from the BASIC level to the ADVANCED level.
Legal tasks are defined by OPM as “functions which require (a) a thorough mastery of “Basic” and “Advanced” functions and which in addition require (b) a sound understanding of the aspects of those procedural and substantive law generally and of the statutory and case law applied to patents specifically which are applicable to the patent examining process.”
To improve the quality of the examiners’ analysis and determinations for compliance with 35 USC 102, 103 and 112, the USPTO could elevate these tasks to the LEGAL level.
Wouldn’t Congress, the USPTO and the IP community want the 102, 103 and 112 rejections to be written by examiners applying a sound understanding of procedural, substantive statutory and case as applied to patents examining process?
Instead, the FY2021 “Roadmap to Improved Patent Quality” downgraded “analyzing claims and disclosure for compliance with 35 USC 112” and “making proper rejections under 35 USC 102 and 103 with supporting rationale or determining how claim(s) distinguish over the prior art” from the ADVANCED level to the BASIC level.
Moreover, the FY2021 PAP lists the LEGAL tasks of “evaluating/applying case law as necessary” and “evaluating the sufficient of affidavits/declarations” as non-error based assessments. This means the USPTO’s quality metrics (and the examiners’ performance reviews) don’t capture whether or not these important LEGAL tasks are performed correctly.
Breeze hit the nail on the head. It is all about the PAP.
No amount of PTO training and no amount of extra examination time will be effective at achieving “quality” examination as long as the examiner’s PAP fails to comply with OPM’s performance standards. Patent examination quality will not improve as long as 102, 103 and 112 rejections are being performed as BASIC level tasks by entry level employees.
Icing on the cake: the FY2021 PAP allows seasoned primary examiners — ones getting paid at the GS14 and GS15 levels — to evaluate claims fro compliance with 102, 103 and 112 at the BASIC level.
Could someone have misunderstood that move, thinking that “advanced” or correct processing SHOULD BE something that all examiners should be capable of doing AT a basic level, thereby indicating that if one is at an advanced level, these ‘fundamental’ activities would be even more honed at an ever higher level?
In other words, all examiners, even basic ones should at a minimum understand and apply correctly examination under the law.
“Patent examination quality will not improve as long as 102, 103 and 112 rejections are being performed as BASIC level tasks by entry level employees.”
I don’t think the label on the task matters. Being able to reject allowable claims with improper grounds/reasoning without consequence, and with reward the most likely result, is the problem. As long as that continues, there will never be “quality” examination.
“To improve the quality of the examiner’s searches, and to maintain consistency with OPM’s standards, the USPTO could elevate these important search tasks from the BASIC level to the ADVANCED level.”
No. The classification for the task does not have an impact on how stringently the task is evaluated.
And your suggestions would have other consequences, because these classification are used to set the GS level of examiners.
By increasing the assigned difficulty of the tasks, OPM might not allow the office to hire examiners at GS-7,9,11 anymore.
“By increasing the assigned difficulty of the tasks, OPM might not allow the office to hire examiners at GS-7,9,11 anymore.”
First, she is talking about these items have been downgraded – NOT upgraded.
Second, were they TO BE upgraded, then hiring at higher salary grades would align with what you want, would it not?
Any such action would then of course be properly reflected in a proposed budget from the Office to Congress, which would be the entity granting such (and removing your penchant for “blame the applicant”).
“And your suggestions would have other consequences, because these classifications are used to set the GS level of examiners.
By increasing the assigned difficulty of the tasks, OPM might not allow the office to hire examiners at GS-7, 9, 11, anymore.”
BINGO, Ben. Let’s take this three steps further.
First, by decreasing the FY2021 PAP classifications for how GS-14 or -15 primary examiners are to
(4) analyze the disclosure and claims for compliance with 35 USC 112 and
(6) make proper rejections under 35 USC 102 and 103 with supporting rationale, or determine how the claims distinguish over the prior art
from Advanced down to the Basic level;
Second, by assigning aforementioned quality major activities (4) and (6) to trainee, entry-level GS-7 and 9 examiners; and
Third, by evaluating 5 out the 9 remaining Legal tasks under the USPTO’s homegrown “non-error based assessment;”
one wonders whether results from an OPM desk audit, gasp, would justify the USPTO’s continued assignment of GS-14 and GS-15 levels to primary examiners working under the FY2021 PAP?
The FY2021 PAP’s Quality Element, created via agreement between USPTO management and POPA officials, is shown in Table 3 of this article:
link to ipwatchdog.com
So you are saying that Ben (and/or many others) should be expecting pay cuts for the same work?
While I think you misunderstand the “non-error based assessment” as meaning that these activities are not critically evaluated, your point about the decrease in task difficulty potentially causing OPM to downgrade examiners was an interesting one.
Unfortunately, having looked into the matter, the evidence suggests that there was no such downgrade .
Your article says there are “two QMAs now downgraded from the 2015PAP’s Advanced level to Basic level”. Your article indicates these two QMAs are for 112 compliance and proper rejections under 102/103.
The “Statement of Robert D. Budens” actually contains a FY2015 PAP (attachment 1) and it shows in black and white that the 112 compliance and proper 102/103 rejections QMAs were already “basic” activities for FY2015 .
(Your article’s link to the Budens statement was dead, but the following link appears to be equivalent, and is from house.gov)
link to docs.house.gov
I do not blame you for this error since it seems to have originated in the 2015 NAPA report, which confuses category 1/2/3 errors with basic/advanced/legal tasks.
But I hope it will be clear to you that they made an error when you note that the NAPA Report says “Only Primary Examiners are responsible for category 3
Activities” while we know that GS11-13 examiners are responsible for some “legal” tasks (Per the Budens statement PAP).
I hope the publisher of your article will allow you to correct these factual errors.
So Ben, you are saying that you have been overpaid since 2015?
You don’t seem so upset about the misuse of those resources.
“Legal tasks are defined by OPM as “functions which require (a) a thorough mastery of “Basic” and “Advanced” functions and which in addition require (b) a sound understanding of the aspects of those procedural and substantive law generally and of the statutory and case law applied to patents specifically which are applicable to the patent examining process.”
To improve the quality of the examiners’ analysis and determinations for compliance with 35 USC 102, 103 and 112, the USPTO could elevate these tasks to the LEGAL level.
Wouldn’t Congress, the USPTO and the IP community want the 102, 103 and 112 rejections to be written by examiners applying a sound understanding of procedural, substantive statutory and case as applied to patents examining process?
Instead, the FY2021 “Roadmap to Improved Patent Quality” downgraded “analyzing claims and disclosure for compliance with 35 USC 112” and “making proper rejections under 35 USC 102 and 103 with supporting rationale or determining how claim(s) distinguish over the prior art” from the ADVANCED level to the BASIC level.
Moreover, the FY2021 PAP lists the LEGAL tasks of “evaluating/applying case law as necessary” and “evaluating the sufficient of affidavits/declarations” as non-error based assessments. This means the USPTO’s quality metrics (and the examiners’ performance reviews) don’t capture whether or not these important LEGAL tasks are performed correctly.”
Well, that explains a lot! How can someone who was minimally trained legally be qualified to apply “…a sound understanding of the aspects of those procedural and substantive law generally and of the statutory and case law applied to patents specifically which are applicable to the patent examining process.” How?
And now I know why they simply dismiss affidavits regularly. Although, to be honest, this has been going on for a while. I particularly enjoy when an examiner declares that the declaration from an expert was not persuasive because to them, a non-expert, usually.
I have to wonder if that amounts to “inequitable conduct….
(for Ben’s and Jr’s consideration)
Inequitable conduct is rampant. The PTO should make an example of Cooley and suspend the license of all the attorneys involved. This is just a more flagrant case.
Rampant…?
0h please.
Get out of your ivory tower, and you will see more inequitable conduct. I take it as an honor to get flamed by “anon” since “anon” is a creep to everyone who comments.
Lol – no ivory tower here.
And getting flamed should not so (blindly) be taken as an honor — doing that robs yourself of an opportunity of learning, son.
The answer is yes, but the perpetrators are the judges.
The defendant’s focus on copying per se is a red herring. Copying from other documents is done frequently. The copying is, however, evidence that the attorney knew of the publication and knew it was close prior at (which, apparently, he admitted anyway). So the only relevant question is was it material to patentability (apparently yes), and was it deliberately withheld (yes). Sounds like inequitable conduct to me.
But I have to wonder, even if Pure Hemp prevails, how is that going to help them recoup $$ from a bankrupt company?
Smells like inequitable conduct.
Yes Malcolm, your smell is legendary.
(That’s not a good thing)
I read with interest about a “policy” of a leading patent law firm to hold back telling the USPTO about the relevant prior art until after the PTO has issued its FAOM. I presume that this is “policy” because it benefits the clients of the firm.
What springs to mind is the by now well-known (through Daniel Kahneman’s book) division in the human brain between its fast-thinking primitive part and its slow-thinking analytical part, and the relevant-for-advocates “elephant and mahout” analogy from Jonathan Haidt in “The Righteous Mind”. Once the PTO Examiner has formed an initial positive opinion on patentability, no amount of belatedly presented prior art will be enough to change their mind. To the contrary, the analytical mind is brilliant at justifying the correctness of the initial knee-jerk opinion.
Kudos to Cooley.
“Once the PTO Examiner has formed an initial positive opinion on patentability, no amount of belatedly presented prior art will be enough to change their mind.”
I would guess that simple structural constraints at the office provide the motivation. Examiners get 5x as much time for a first action than they get for a final action. Provide a great reference after the first round, and the examiner just doesn’t have the time to write up new rejections based on the new reference. No psychology required.
Thanks Ben. Didn’t know it was 5x as much. Wow.
Hide-and-seek. It’s not just for the kids.
Ben — once again — falls into the trap of thinking that what applicants pay for has to do with his internal metrics.
There is no so match — and Ben is cheating any applicant when he curtails meritorious examination because of his personal internal metrics.
Shame on Ben and shame on anyone who falls for Ben’s misdirection.
Waa waa waa.
Get real. It shouldn’t matter when the publication is reported, but the reality is it probably does.
The world isn’t the way you want it to be. Keep crying about it.
You’re wrongly under the impression that he actually cares about the quality of examination at the PTO.
The point is to offload the blame to someone else for the quality of examination that his client’s receive.
One just needs to forget his and the patent bar’s opposition to raising fees to the degree necessary to provide that quality.
His clients are owed fully automated, luxury space examination and it’s just someone else’s fault that they’re not paying enough to get it.
One just needs to forget his and the patent bar’s opposition to raising fees to the degree necessary to provide that quality.
That seems to be pulled out of thin air.
The patent bar has long expressed support for the USPTO being able to use ALL of the fees that they have collected.
As for “quality” of examination, no matter how much the USPTO collects in fees, I’m 100% certain that the USPTO can use ALL of that money for a ‘higher quality’ examination. Under that premise, there is no limit to the amount of money that can be requested by the USPTO. However, there should be a reasonable limit as to how much money the USPTO should be requesting for examination.
The underlying goal of the USPTO is to “promote the Progress of Science and useful Arts.” However, that goal is severely hampered if it costs (by way of example) $1M in government fees for a single application. While there would likely be a number of applicants who would pay that amount, I suspect that number would be just a few percent of the number of applicants that the currently avail themselves of the US patent system.
Like most everything in life, there is a tradeoff. In this instance, the tradeoff is between maximizing usage of the US patent system (and consequently maximizing the progress of science and the useful arts) and providing the best examination. One cannot have both.
If the patent bar opposes fee increases it is because they believe the USPTO is already being denied resources already paid for (i.e., fee diversion) and/or the USPTO has not established that an increase in fees is justified as a result of the tradeoff.
His clients are owed fully automated, luxury space examination and it’s just someone else’s fault that they’re not paying enough to get it.
It is. There are two entities at fault. First, there is the USPTO for not doing the job they were tasked to do. Second, if the USPTO doesn’t believe it has enough resources to do the job, then it is their responsibility to go to Congress and ask for more resources (in terms of public funding and/or more user fees), which makes it a combination of the USPTO’s and Congress’s fault. Applicants already do pay more (in the form of additional claim fees) when necessarily yet they do not get the additional examination paid for by those fees.
Anon’s point is that the USPTO’s internal metrics for allocating examination time should not be a justification for doing a poor examination.
As an aside, I disagree with the approach of hiding the best prior art until later in prosecution. I dislike when either side (the USPTO or applicant) attempts to game the system to their own benefit. The grant of a patent should be a collaborative effort between the USPTO and applicant. However, this collaborative effort is short-circuited when either side withholds critical information from the other (e.g., prior art). The most efficient examination happens when the best prior art is identified during the early stages of examination.
You nailed it Wt.
So on the one hand the patent bar is justified in resisting fee increases because 1 million dollar fees wouldn’t promote the progress.
And on the other hand, the patent bar isn’t to blame because two organization that are substantially responsive to the patent bar stakeholders haven’t done something that the patent bar resists.
How convenient that you’re advancing a personally exculpating argument that is based on an excluded middle and ignoring how political bodies react to their constituents.
“Internal metrics” are not the justification for “poor examination” when applicants delay providing their prior art. The justification is the finite nature of the patent office’s resources. The office has a structured process to utilize its finite resources, and applicant’s actions have caused a misallocation of those resources.
To demand at that point to get the same examination as you would’ve gotten if the references were initially provided is to act as if the office does not have finite resources. But that is anon’s whole shtick: he assigns an infinite obligation to the office and its employees while ignoring the very finite resources that are input. He is not reasonable or rationale. He expects examiners to work for free based on applicant’s misdeeds, and he refuses to accept the tradeoffs between price, speed, and quality. These are not the expectations of someone who actually cares about having an operational patent office. And they are not the expectations of anyone who has any sense.
One can criticize the office, the fee structure, and examiners without being such an utter mooncalf. But he does not. And that is what you’re defending here.
“So on the one hand the patent bar is justified in resisting fee increases because 1 million dollar fees wouldn’t promote the progress.”
“And on the other hand, the patent bar isn’t to blame because two organization that are substantially responsive to the patent bar stakeholders haven’t done something that the patent bar resists.”
Logical fallacies aplenty here. The Patent Bar is simply NOT to blame because the Patent Bar has no authority over what CONGRESS sets up as the patent system, NOR what the Patent Office does to set up its internal metrics. But you should be aware that the Patent Office in setting up those internal metrics ALSO does not have authority to overwrite the system that CONGRESS set up.
Your attempt to make this some type of “blame game” AND attempt to place that blame on practitioners is thus doubly WRONG.
This also echoes a point that I have long called you out for: stop trying to make YOUR problems to be the problems of my clients.
“How convenient that you’re advancing a personally exculpating argument that is based on an excluded middle and ignoring how political bodies react to their constituents.”
How “convenient” for you to insert a bogus argument in attempting to reach (somehow) YOUR OWN ‘personally exculpating” position of NOT being responsible for a proper – and full – examination — as required under the law.
Your attempt at some “excluded middle” AND “1gn0ring how political bodies react” are MEANINGLESS.
“The office has a structured process to utilize its finite resources, and applicant’s actions have caused a misallocation of those resources.”
Sorry but no – as the (not followed here) protocol IS within the actual process SET BY LAW. You (too) seem to not understand the limits of what the administrative agency of the Executive Branch may properly do.
That is a “YOU” problem.
“…is to act as if the office does not have finite resources.”
No, it is not – it is an entirely appropriate request to follow the law – as set by Congress.
You confuse (yet again) something that you simply do not like with something in your mind is not proper.
Again, that is a “YOU” problem.
“But that is anon’s whole shtick: he assigns an infinite obligation to the office and its employees while ignoring the very finite resources that are input.”
False. There is no such “infinite obligation, as the obligation is ONLY to the law as written by Congress,
“He is not reasonable or rationale.”
False again. I am eminently reasonable and rationale as I am basing what my clients are to get on what Congress has set forth for my clients to get.
You on the other hand want something else, and you whine and moan about YOUR internal metrics as if those are the only things that matter: the epitome of a bureaucrat.
“He expects examiners to work for free based on applicant’s misdeeds,”
Absolutely false – and your insertion of “misdeed” is noted as NOT being in accord with the actual law as set forth by Congress.
“… and he refuses to accept the tradeoffs between price, speed, and quality.”
Again false – I do not accept YOUR misguided view of permissible tradeoffs because YOUR view is simply NOT the one that Congress has provided to my clients.
“These are not the expectations of someone who actually cares about having an operational patent office. And they are not the expectations of anyone who has any sense.”
Both of these are false – you are yet again confusing what YOU want with what is meant by caring and having sense.
Again, that is a “YOU” problem.
“One can criticize the office, the fee structure, and examiners without being such an utter mooncalf. But he does not. And that is what you’re defending here.”
The only ‘mooncalf’ here is you, as you continue to ignore the actual bargain set forth by Congress and ONLY want what you want. Wake up son and see the bigger picture and stop being such a simpleton, focused on your wants.
And on the other hand, the patent bar isn’t to blame because two organization that are substantially responsive to the patent bar stakeholders haven’t done something that the patent bar resists.
Congratulations on making a sliding scale a binary proposition. Yeesh.
ignoring how political bodies react to their constituents.
Congress is most reactionary to the USPTO. Congress relies on the USPTO to say what should or shouldn’t be done. Again, it is the job of Congress to lobby for more resources if they need them.
applicant’s actions have caused a misallocation of those resources
Don’t confuse the exception with the rule. While there may be some attorneys that wait until after the FAOM to file an IDS, that is, by far, the exception. Regardless, the job of the Examiner is to find the best prior art. They shouldn’t have to rely on applicants to provide them with it.
To demand at that point to get the same examination as you would’ve gotten if the references were initially provided is to act as if the office does not have finite resources.
The USPTO is tasked with a job. Sometimes I’m tasked to write a response to an Office Action that takes twice as long as others. However, I do it because that is what I’m paid to do. If it happens too frequently, I’ll up my fixed me. Regardless, once I agree to perform a task at a particular price, I’m on the hook to do that job properly.
He is not reasonable or rationale. He expects examiners to work for free based on applicant’s misdeeds, and he refuses to accept the tradeoffs between price, speed, and quality
Again, it is the job of the Examiner to find the best prior art regardless of what applicant provides.
One can criticize the office, the fee structure, and examiners without being such an utter mooncalf.
Don’t act holier than thou. An examiner is a highly-paid professional. Under that assumption, act like one and do the job you were paid to do.
“Congratulations on making a sliding scale a binary proposition. Yeesh.”
That is exactly what you’re doing!
Maybe I’m not being clear here. I’ll give this one last shot with you.
I do not mean to assign 100% blame for the ills of the patent system on the patent bar.
There are absolutely lazy examiners at the PTO who deserve some fraction of the blame. There are awful administrators who deserve a fraction, likely a very large one, of the blame. Congress certainly deserves a good chunk of the blame. Even the public deserves some of the blame for not holding congress accountable for fixing the system.
And some of the blame falls upon the patent bar.
Everything you’re saying suggests that you think that the patent bar is completely blameless. That the people who the PTO is absolutely obsessed with as “stakeholders” (to the almost express exclusion of The Public these days) have no responsibility for the system.
That is just cracked.
“Don’t act holier than thou. An examiner is a highly-paid professional. Under that assumption, act like one and do the job you were paid to do.”
This is a dumb, non-responsive comment, and it is beneath you.
Why don’t you try asking anon how the office should handle the specific circumstances that came up here. Where examining resources are spent based on an assumption that applicants provide their prior art at the beginning of examination, and they fail to do so.
He won’t have an answer. He’ll just say something equivalent to “they should just examine it.” There would be no grasping with the realities that the office faces. Just demands.
I’m not being “holier than though” by pointing out that he’s just sticking his head in the ground and refusing to even look at the problem. Or by pointing out that this head-in-ground attitude is what you’re standing alongside.
[I]t is the job of the Examiner to find the best prior art regardless of what applicant provides.
Solid gold is trading for ~$1160 per cubic centimeter right now, but you can buy a cubic centimeter block of balsa wood wrapped in gold foil for ~$2. If someone offers to sell you a cubic centimeter block of “solid gold” for $10, do you think “what luck!” or do you think “yeah, right”?
If you pay the $10, and then discover when you get home that it was just foil wrapped around a wood block, do you run back to the same vendor and pay another $10 with the expectation that this time it will be a chunk of solid gold?
Incidentally, do you have a contract signed by the PTO promising that they will find the closest prior art in return for your filing fee? I have never received such a contract. From where has arisen your expectation about the consideration that you believe yourself due in return for your fees?
More B$ from Ben — who still does not understand what is proper (as set by Congress).
“Why don’t you try asking anon how the office should handle the specific circumstances that came up here. Where examining resources are spent based on an assumption that applicants provide their prior art at the beginning of examination, and they fail to do so.
He won’t have an answer. ”
Wrong.
I have the genuine answer. It happens to he different than the answer you want – but as already pointed out, what you want is not in accord with what Congress has set out.
I have also pointed out that Copley’s fully legitimate protocol is NOT a gold standard nor what I would prefer to do, but that simply does not make it improper or somehow “misusing USPTO resources” in ANY untoward manner.
My clients deserve what Congress sets out – not what examiner Ben feels.
That is exactly what you’re doing!
No. I wrote, there is a tradeoff. Like any tradeoff (let’s use the Supreme Court’s moniker of a “flexible test”), there is no bright line. I also wrote that one cannot have both maximum usage of the patent system and the “best” examination. Consequently, one must balance one with the other.
Everything you’re saying suggests that you think that the patent bar is completely blameless.
I wrote that I disagree with the approach of some applicants to game the system. That being said, we (i.e., the Patent Bar) do not control or fund the examination system. Those functions respectively belongs to the USPTO and Congress. We just use the system. Again, I don’t agree with those who use the system irresponsibly but the inner workings of the system are out of our hands.
Why don’t you try asking anon how the office should handle the specific circumstances that came up here.
Anon rarely answers questions. You should know that by now. As for handling the specific circumstances, the USPTO should examine the application. Do you think I like having drafted 90% of an application (on a fixed fee) and having three new embodiments on me (that need to be described) at the last moment? I don’t. But since it is my job to prepare the application, that’s what I’m going to do.
Where examining resources are spent based on an assumption that applicants provide their prior art at the beginning of examination, and they fail to do so.
Examining resources should be based upon applicants not providing anything. It should just be a bonus if applicants do provide good prior art. Let’s face it, many applicants provide nothing at all. Consequently, the default position of the USPTO should be to assume that they’ll need to do a full search.
Even if 80% of applicants provided the best prior art the first time, the USPTO can never be sure which applications were in the other 20%. Consequently, the USPTO would still need to fully search each application as if the best prior art was not disclosed and budget their resources accordingly.
MOVING ON TO OTHER COMMENTS
Incidentally, do you have a contract signed by the PTO promising that they will find the closest prior art in return for your filing fee? I have never received such a contract. From where has arisen your expectation about the consideration that you believe yourself due in return for your fees?
Does anyone ever have a contract guaranteeing that they’ll provide the best service possible (best haircut? best plowing of a driveway? best drafted patent application?). No. However, if I pay for a service, I expect it to be done competently. If I contract with my plowing company to plow my driveway for $50/plow, I expect it done competently whether it is 2″ of snow or 24″ of snow. Clearly, plowing 2″ of snow is easier than plowing 24″. How the plowing company financially makes it work is up to them. If they advertise doing a job for $X amount, then I expect the job done.
But will it not continue unchecked, rampant even, until such time as the courts signal that they deplore it too and will sanction it proportionately?
It isn’t up to the Courts to manage the USPTO’s management of workload.
I see more than one person here making the mistake of confusing not liking an answer I give with the odd idea that I have not given an answer.
That’s a bad look for those playing that game, as anyone reading the exchanges can easily see through such shenanigans (guys – it paints you as duplicitous and unwilling to engage that which you merely don’t like)
“Those functions respectively belongs to the USPTO and Congress.”
Fine. You’ve deliberately avoided acknowledging any responsibility while repeatedly blaming others. You appear to be a true believer that the patent bar has no responsibility for the ills of the patent system.
I think this is, at a minimum, wrong as in a democracy the public is responsible for the government it gets.
I think it is further wrong given that the PTO is expressly focused on stakeholder (defined as applicants and their respresentatives) concerns.
And I think it that a fair minded person who wasn’t interested in blaming someone else wouldn’t not believe what you appear to believe.
“Anon rarely answers questions. You should know that by now.”
You know it, and yet you stand in defense of someone who has no solutions, only infinite demands for service in exchange for finite inputs.
“As for handling the specific circumstances, the USPTO should examine the application.”
The application was examined. Apparently this art what not found. The question is how should the PTO handle such circumstances. Where do the additional resources come from to deal with the case at that point?
Saying that the PTO should just find the art anyways is a cop-out. There is a real question of resource allocation at this point in examination which you refuse to address. “Just do it” or “just find the art yourself” is not actually a solution. It’s a petulant demand for the world to be the way you want it to be.
Ben,
Your feelings — as errant and unconnected as they are — are noted.
“Your continued desire to want to place blame is simply wrong.
Further, I HAVE given you answers, and you persist in your delusion of thinking answers you happen not to like are somehow not “real” answers.
You will never grow with a mindset like that.
All fine and good, WT, that you deplore any gaming of the system. But will it not continue unchecked, rampant even, until such time as the courts signal that they deplore it too and will sanction it proportionately? What comes to mind is the attitude of the courts in England. Post-issue curative amendment to a patent claim is discretionary. Failing to tell the PTO expeditiously about prior art could be a reason to decline to admit the curative amendment.
But as another commenter observed, even if you hold back the prior art until after the FAOM, the USPTO Exr still signs that they have considerd the art. Given that, the court (it seems to me) has no scope to find that Applicant is gaming the system. The games must go on, eh?
As for MaxDrei, let’s start with his ever present “here, wear my glasses” error of, “What comes to mind is the attitude of the courts in England.”
He wants (as is his typical want) to 1GN0RE the fact that the US Sovereign has chosen differently, and has set the authority to set patent law (including explicitly how the patent office is to be run in view of what the patent office MAY require of applicants), and this is NOT a function of the US Courts.
Let me (yet again) share that in THIS country, Constitutional delegations of authority must be taken strictly (as with any sharing of that authority from one branch – the Legislative Branch – to another branch – the Judicial Branch). Equitable concerns then MUST BE view as severely circumscribed to the explicit words of Congress, and there is simply NO such allocation of authority (in the US Sovereign) that MaxDrei “sees” with his particular pair of eyeglasses.
Thus, his “throw C R A P against the wall and emotive see what sticks of, “…will it not continue unchecked, rampant even, has no place in the legal structure.
He even stumble (badly) with an apparent attempt to move the goal posts with (emphasis added): “Post-issue curative amendment to a patent claim is discretionary. Failing to tell the PTO expeditiously about prior art could be a reason to decline to admit the curative amendment.” – the issue here is NOT “Post-issue.”
+1 WT
You know, the biggest problem (or one of them) is how poor a job the PTO does on allocating work.
Sometimes I get experts in fields and then prosecution is easy. We quickly narrow down exactly the scope the claims should be and get an allowance.
Most often I get someone that know little about the field. They don’t even know basic definitions or even understand how complex technology works. They come up with ridiculous rejections and the scope of the claims and what gets allowed is almost random.
Most often I get someone that know little about the field.
It is distressing how true this is. I can appreciate that the PTO cannot afford to hire many law-trained people as examiners, but the idea is supposed to be that they are hiring people with training in the fields that they are examining. Often, however, I find myself having to educate examiners about very basic aspects of the subject matter in question. I do not have much of a solution (except, perhaps, to outsource the work to Europe or Singapore, where the quality of science training seems to be better among the examiner corps), but it is hard not to notice the problem.
B-b-but “resources,” so it is your fault…
>>It is distressing how true this is.
My sense Greg is that the people are competent in that they are educated and care. But they seem to get too many technologies thrown at them and not enough training in the technologies they are examining.
The quality of the people and their education is good enough. The problem is with the PTO.
That’s definitely a problem!
The Office has for quite some time struggled to get well qualified people in many fields.
What does one do when one wants more units and the market is unable to supply more units at the current price? You improve your offer. When you can’t improve your offer or your improved offer is insufficient, you accept inferior goods to cover the shortfall.
“someone that know little about the field” is inferior goods.
Someone that sends out shoddy office actions is inferior goods.
The office doesn’t want to employ these people, but given the choice between having an empty seat (with the implications of empty seats for those all-consuming pendency goals) and accepting inferior goods, it takes the inferior goods.
If you want the office to acquire better people, you’ve got to enable them to make a better offer. Simply demanding better quality ex nihilo is not a solution.
How is this not obvious to you guys? Didn’t you all have to take the most basic economics in college?
[T]he people are competent in that they are educated and care. But they seem to get too many technologies thrown at them…
Could be. In any event, I agree with your earlier point that prosecution is both better and faster when the examiner knows the tech area well.
How is this not obvious to you guys? Didn’t you all have to take the most basic economics in college?
I definitely did not take any econ classes in college. I was a double major (biology and philosophy). Scheduling was hard enough already. Trying to fit classes into my schedule that I did not absolutely need would have been more bother than it was worth.
In any event, your broader point is obvious. I agree with you that one gets what one pays for. I say as much in 2.1.2.1.1.1.5.
Anyone who pounds the table and complains about the quality of the USPTO’s examination should be demanding fee increases to provide the resources necessary to achieve this desired improvement. Someone demanding one without the other is a clown who should be ignored as fundamentally unserious or not speaking in good faith (or both).
“Anyone who pounds the table and complains about the quality of the USPTO’s examination should be demanding fee increases to provide the resources necessary to achieve this desired improvement.”
Right.
And as a parallel point of that, I completely understand anyone who is fully satisfied with the Office’s performance being opposed to increasing fees.
If you think it’s currently good enough, why should you pay more? I understand that, and I accept it as a consistent and coherent position.
But “fully satisfied with the Office’s performance” is not a common perspective around here.
“Someone demanding one without the other is a clown who should be ignored as fundamentally unserious or not speaking in good faith (or both).”
What a self-righteous (AND misguided) arse Greg is.
‘If you don’t behave like Greg thinks everyone should behave, Greg is going to judge you and deem you “clown or bad faith or both”
He IS the clown who believes that he determines “bad faith” (while again getting the legal point wrong).
Anyone who pounds the table and complains about the quality of the USPTO’s examination should be demanding fee increases to provide the resources necessary to achieve this desired improvement.
This statement presumes that throwing more money at the problem will solve the problem(s). This statement also assumes that the problem(s) are because of lack of resources.
There are a whole host of issues at the USPTO that impact quality that do not involve lack of resources. Just to name a few, there are examiner who simply do not pull their own weight. There are examiners who do as little as possible to get a count. If an examiner is already getting credit for 10 hours of work but is only doing 5 hours to get that credit, will giving the examiner 20 hours make things better?
Institutionally, the application of the law can be very inconsistent (I’m looking at you 101). This means that applicants cannot easily overcome rejections using the same approach. It is like a large corporation having to navigate the laws of 50 different countries. This delays resolution of issues, which is less time-efficient for the USPTO.
As an aside, and not to directly related your comment, but let’s be clear about a particular point: the Patent Bar does not pay the fees. That is the responsibility of our clients. If we (i.e., the Patent Bar) are resisting fees it is because we already see that the patent system is the sport of kings and we don’t want to further raise the bar for those wishing to participate in it.
It is my opinion (and I assume of many others) that our desire is for the USPTO to fix the problems of its own making before asking applicants for more money.
Greg IS a Sport of Kings kind of guy.
“there are examiner who simply do not pull their own weight”
This is indeed a problem. But it is not unrelated to the financial inputs of the PTO.
The supply of workers for a job is a function of the demands of a job.
If the office was better about culling bad examiners, the demands of the job would be higher. So the supply of workers for the job would be lower.
The office is presently struggling to keep warm bodies in these seats even at the the current level of demands.
If you want examiners held to higher standards, you’ve got to pay examiners more (Assuming pendency is held constant, and management cares a LOT about pendency).
“It is my opinion (and I assume of many others) that our desire is for the USPTO to fix the problems of its own making before asking applicants for more money.”
It is everyone’s opinion that they would like more/better without paying for more/better.
Unless you identify specific inefficiencies within the PTO, this is no different than someone demanding improved social security benefits increase without any corresponding increase to taxes or the deficit.
No Ben,
This is YOU wanting to make YOUR problems (internal metrics) to be the problems of me and my clients.
With all due respect, F off with that.
I want what Congress has set forth.
Nothing more, nothing less.
“The office is presently struggling to keep warm bodies in these seats even at the the current level of demands.”
Hello AI.