The entries of Public PAIR are riddled with errors and discrepancies. However, it is still true that more PAIR entries in a file usually indicates that there were more filings by the applicant and more resistance from the PTO.
The Data: The above graph compares data from a random sample of 7,000+ issued patents with patent numbers ranging from 6,000,000 to 6,999,999 (General Population) with issued patents from the same range that were examined within Art Unit 3600 (a sample of 954 patents). I counted the number of PAIR entries for each patent and used that data to calculate histogram information. Data-points represent range-buckets — e.g,. 0–4 PAIR entries, 5–9 PAIR entries, …
The Results: The prosecution histories of Business Method patents include significantly more entries. [33.4 entries for average BM patents as opposed to 27.0 for average GP patents].
As I have discussed before, business method patents are slow to make it through the patent office. One reason for the delay is a large queue in applications awaiting initial examination. However, this data preliminarily confirms that another reason for delay in Business Method is that the PTO is putting up a relatively higher level of resistance. Anecdotally, this resistance is seen in the “second pair of eyes” review and harder fights on Section 101 issues. The PTO might counter that many business method patents are poorly drafted, thus making the process more difficult.
Notes:
- For the purposes of this study, Business Method Art Unit 3600 includes Art unit 3621–3629 and 3639. [Pre-business method uses of 3600 were excluded].
Evidence Based Prosecution:
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To pds
“Although the PTO (i.e., the executive branch) has to make an initial determination as to what the law means, any dispute over the meaning of the law is left to the judicial branch.”
So you agree with me that USPTO can look to the Constitution as one important source to interpret “obviousness”.
The ultimte interpretation of obviousness will be made by SCOTUS and I expect that the CAFC’s position that judicial convenience is more important than compliance with the Constituton is not going to be a persuasive argument.
Just thought of another example…
If an examiner gets an application for a patent for a “perpetual motion machine,” I doubt anyone could say with a straight face that the examiner does not form an initial impression about what the likely outcome of the examination process will be.
If the examiner does not put together a good enough case for unpatentability, he will probably try harder rather than simply allowing the patent. Some might say that this unfairly turns prosecution into an endurance contest, but at least in some cases it’s justified.
If the examiner’s instinct is bad, however, and he thinks that your wonderful invention is actually a perpetual motion machine, I can see how that might be frustrating.
There’s no need to trash the other commenters … sometimes non-lawyers make comments that don’t make a lot of sense if you understand the law, and other times non-lawyers (or people who specialize in other fields) have better insights than the lawyers and merely get some of the technical details wrong. You should them some slack on the details and address their arguments on the merits.
I think that when an examiner has an instinctive reaction to whether a patent is “good” or “bad,” that means that the examiner has an initial thought about how likely it is that the application will meet the statutory requirements. That’s what the examiner has been trained on, and it’s not too different from the idea that a judge probably has an initial thought about how a case will turn out before he gets too deeply into the paperwork. For example, if a patent for a wheel comes in the door, the examiner probably initially thinks “that’s a ‘bad’ patent,” and then reads the patent more closely to see if his initial impression is right or wrong. If a patent for a new method of “swinging” comes in the door, the examiner knows that people have been “swinging” for years, and he should probably take a good look at swingset designs, etc. If a patent for a cure for cancer comes in the door, the examiner knows that 102 and 103 probably won’t apply, but he should spend more of his time ensuring that the written description matches up with the scope of the claims. (112).
When examiners decide to reject or allow patents, they probably do some kind of a gut check to be sure that they haven’t missed something. I think that’s more likely what’s going on than that they’re reading the op-eds about the Blackberry case.
Instinct comes from experience, and there’s nothing wrong with using it in your job examining patents. The challenge, however, is setting your instinctive reaction aside when the law shows that it was wrong. I think that’s the point of the statutes, at least as they apply to the PTO–to be sure that examiners reject patents for legitimate reasons instead of relying solely on a gut check.
And the point of the BPAI and the CAFC, as far as their function reviewing the PTO, is to be sure that when examiners aren’t using the statutes as a cover for relying solely on a gut check.
Just my opinion, though. I’m not an examiner and never have been.
Dennis,
I apologize for my late response to your questions. I do not have evidence of different handling of PAIR entries by LIE’s in the business method area, or any differences in applicant initiated transactions in this technology. My point was that based on my many years at the PTO, there were so many different factors that impact on the number of PAIR entries, that I did not feel you could draw the conclusion you drew from simply comparing the number of PAIR entries.
“Good” patents are those that satisfy Title 35 requirements. Certainly patents for swinging methods, garbage bag designs, etc. don’t “feel” right to some people. But the PTO is probably just treading lightly in prosecuting business method patents because they’re aware of the murmurs about patent reform in general, and particularly about expansions of patentable material. Let’s hope the data is more a reflection of patent attorneys’ relative inexperience in carefully drafting claims rather than any heightened standard the PTO is applying.
Mr. Jaglowski,
Again, I could barely hear your arguments…all I could hear was your tone.
btw, the “endurance contest” that you speak of is a two way street. Indeed I would say that prosecutors travel down that street much more than examiners.
I’ll say this: if an examiner sees an application on a new tax strategy and “just knows” that it isn’t patentable, then I hope to god that the examiner pulls out all the tricks and beats the prosecutor in this “endurance contest” that you speak of.
Your arguments about who adminsters the laws and interprets are an oversimplification to say the least.
have you taken con law?
have you taken admin law?
Also, I’m no psychic, but i’m willing to bet that you are a patent prosecutor in the business method patent area, aren’t you?
“So in effect Mr.Jaglowski is somewhat misguided in implying that it is not the USPTO’s job to assure that patent applications meet the patent standard and promote the progress of science and the useful arts.”
I most certainly am not. The standard that Congress has established is set out in Title 35 of the United States code. The USPTO’s job is not to alter that standard by reaching back to Article 1, Section 8, but to execute Title 35 in conformance with Congress’ will. To the extent that the USPTO is taking actions inconsistent with the Patent statute and the Federal Rules in the name of Article 1, Section 8, those actions are ultra vires and must be opposed.
“It would be discouraging if they weren’t trying to get applications to the “really good” standard before issuing them as patents.”
Wrong. The USPTO’s job is to ensure that a patent meets the standards of 35 U.S.C. 101, 102, 103, and 112, etc. If the USPTO cannot build a legally sufficient case for why a claim fails to satisfy these requirements, then the USPTO is obligated to issue the patent. I am perfectly aware of how the Constitution works, oh gentle readers, but I am also perfectly aware how USPTO prosecution is turning into an endurance contest where some Examiner’s “just know” that an invention is not patentable and conduct the examination accordingly.
“The USPTO is entitled to look at the Constitution when it interprets the legistlation and should try, if possible, to interpret the legislation in a manner consistent with the Constitution.”
One should not have to be an attorney to know the following:
The Congress has the power to write the laws;
the Executive Branch has the power to enforce the law; and
the Courts have the power to interpret the laws.
Although the PTO (i.e., the executive branch) has to make an initial determination as to what the law means, any dispute over the meaning of the law is left to the judicial branch.
“Yes, it acts pursuant to the patent laws, and, no, there isn’t a ‘really good’ statutory requirement. But using the existing statutes as a way to make sure that patents are ‘really good’….well I don’t see how that’s bad at all.”
If someone could describe how to determine a “really good” patent from a “so-so” patent, from a “blockbuster” patent from a “stinky” patent, I would really appreciate an explanation as to analysis that went into such a determination. Moreover, I would like an explanation as to how such an analysis could be fairly and consistently applied by the Patent Office.
I don’t think anybody is against the issuance of “good” patents or against the rejection of “bad” patent applications. However, the problem lies in that everybody’s opinion as to what constitutes a “good” patent versus a “bad” patent application differs. Unless someone can come up with a definition of “good” patent that enough in the House and Senate can agree on to pass a law describing good patents, then the PTO is stuck with the current system.
The USPTO is entitled to look at the Constitution when it interprets the legistlation and should try, if possible, to interpret the legislation in a manner consistent with the Constitution.
I agree with melb’s sentiments above. While the legislative branch makes the laws, the executive branch (in this case the USPTO) carries those laws out. So in effect Mr.Jaglowski is somewhat misguided in implying that it is not the USPTO’s job to assure that patent applications meet the patent standard and promote the progress of science and the useful arts. While the legislature may set the standard it is the USPTO’s job to determine if patent applications meet the standard. Implying that the legislature is the sole government branch involved shows a great deal of misunderstanding of the balance of powers between the legislative, executive, and judicial branches of government.
Mr. Jaglowski,
It isn’t the purpose of the USPTO to promote the progress of the science and useful arts by issuing quality patents that are new, nonobvious, and enabled? So, you’re saying that it is congress’s job to do that? Do Ted Kennedy, John McCain, Barack Obama, etc. etc. examine patents in their spare time? Oh, they don’t, do they? So it is sort of the job of the PTO to promote the progress, isn’t it?
My point is that your post is misguided (and way over-toned). In actuality the PTO does act in the public interest. Yes, it acts pursuant to the patent laws, and, no, there isn’t a “really good” statutory requirement. But using the existing statutes as a way to make sure that patents are “really good”….well I don’t see how that’s bad at all.
mel b
Just out of curiousity — when practitioners complain of unreasonable rejections be made or maintained, particularly with respect to business methods patents, are there particular types of rejections that tend to be made more often (i.e. 112 vs. 102 vs. 103) than others? I examine in one of those old fashioned arts (by that i mean the inventions are things that one can touch, rather than think about, but i digress into the land of patentable subject matter) so don’t really know much about the biz. methods arts.
“It’s job it to ensure that patents meet the standard of serving to “promote the Progress of Science and useful Arts”.
Absolutely wrong.
“The Congress shall have power… To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;”
The patent statute says nothing about the USPTO promoting the progress of science and the useful arts, therefore that power and standard still rests entirely with the legislature, to be defined through laws executed by the President, etc. The USPTO’s
job is to execute the requirements of the patent statute. Period.
Earlier: “Search though I may, I have been unable to locate the “really good” provisions of the patent statutes.”
The Patent Office acts for the public in the patent process. It’s job it to ensure that patents meet the standard of serving to “promote the Progress of Science and useful Arts”. It would be discouraging if they weren’t trying to get applications to the “really good” standard before issuing them as patents.
In the long run, holding patents to a high standard is in _everybody’s_ interest, even inventors.
questions 1 and 2 are excellent ones Dennis. I have lots of applications pending for business methods, and it is clear to me (with 25 years of prosecution experience behind me) that business methods are indeed treated differently. There is extreme reluctance to allow an application. While it may be true that there is a backlog of poorly written applications that bombarded the PTO early on, it is clear that even those that are well written are encountering resistance. My presumption (partially based upon examiner comments) is that the PTO simply does not want to risk embarrassment by issuing a bad patent (I guess there is no shame in failure to allow a good patent application). On several occasions, I have been told by examiners that the invention has to be “really good” before they will be able to get it past their supervisor and the additional reviews necessary. Search though I may, I have been unable to locate the “really good” provisions of the patent statutes.
Anon — Breakdown of non-final & final office actions (and other measures) will be in the next Evidence Based Prosecution.
Abe, Those are good points.
1) Problems with pair data: Do you have any indication that the PAIR Recorders for the Business Method area are systematically more ambitious in capturing entries than are folks in essentially all other areas.
2) PTO Resistance vs. Applicant initiated issues: I agree that applicant’s failure to properly submit an application, filing late declarations, extra IDS documents, preliminary amendments, etc., could all lead to extra PAIR transactions. Is there any reason that this type of activity is systematically greater in the business method area?
I agree with Abe Hershkovitz … a better indicator of resistance might be the number of final Official Actions.
Dennis,
I’m afraid I can’t agree with your conclusions in this case. Legal Instruments Examiners in various tech centers are not equally ambitious in capturing all entires that should be captured correctly in the PTO database. Nor does more entries reflect higher resistance by the PTO. Filing unexecuted applications, IDS’s and supplemental IDS’s, preliminary amendments, etc., might be used more frequently in some technologies than others. These applicant driven activities would obviously increase the number of PAIR transactions. Keep up the otherwise excellent work.
Dennis,
You are doing a great job with this evidence based prosecution series. It would be interesting to extend the analysis to other technologies (e.g. semiconductor vs. biotech vs. software, etc.) and determine which technologies are the highest and lowest in PAIR entries (on average).
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