USPTO Continuation Practice Rules

The following synopsis comes from noted patent attorney Charles Van Horn:

USPTO Commissioner for Patents John Doll announced today at a DC Bar meeting that the final rules on continuation and designated claims practices are at OMB (Office of Management and Budget) for approval.  The final rules were logged in on April 10 and OMB is expected to complete its review in 90 days, but frequently grants itself an extension of time.  The final IDS rules were said to be on the desk of Director Dudas for approval, and will follow the other two packages to OMB in due course.  So at this point in time, July-August would be an approximation for publication of the final rules, with 30 days (based on previous PTO statements) to implementation.  No details of the final rules were disclosed.

Context: The PTO has proposed dramatically limiting the number of allowed continuation applications (including continuations, continuations-in-part, and requests for continued examination) and the number of claims pursued in each patent.  These proposals have drawn ire from the patent bar.

Comments

[johng]

A double whammy. I'm beginning to hate this profession, mainly for the constantly changing rules of the game.

[Ivan Examinerovich]

I think this is great. No I won't have to work voluntary overtime just to keep up because you guys file a hundred claims. I haven't seen a single case that couldn't be summed up in ten claims. All of the office actions from foreign offices that I receive submitted as relevant prior art have two to four of the most relevant references at the most. The examiner looks at the references and the independent claims to see if there is any inventive step and the office action is never more than seven or eight pages long. I have seen actions from Japan, Korea, China, Taiwan, Russia, England--you name it. We are the only country in the world, as far as I know, where the applicants have unlimited claims, continuations, and RCEs. Hopefully this will clear up the pendency and result in solid, quick decisions.

[gary]

Does anyone know if these final rules may be retroactive?

[Scott E. Kamholz, M.D., Ph.D.]

If the rules are retroactive (by which I mean that they in any way prejudice an applicant's right to obtain a patent for subject matter disclosed in an application that was pending before the rules' effective date), then I would expect an immediate challenge to those rules as sanctioning an unconstitutional violation of due process and also as having been promulgated without statutory authority.

[MaxDrei]

Dear Ivan Examiner, right you are, that prosecution before the USPTO is different from all the rest of the world, and all the rest of the world is pretty much the same all over. As you say, for most applications (except chemistry) ten claims does it all (but that only works when courts decide issues of infringement and validity in a common sense way, basing themselves on the substantial "content" of the claim in suit). Wrong you are that UK national patent office limits claim numbers, and has no equivalent to continuation practice. Patent law in Europe in fact offers Applicant more flexibility than the US Statute. Divisionals do what your continuations do. Attorneys the world over (they're all the same) will do, before issue, whatever it takes to get a patent that will be effective and enforceable after issue. The unique fundamental in USA is its system of litigation, and it is that which drives attorney behaviour before the USPTO. Meanwhile, in common law England, patent litigation is very compact. Contingency fees and insurance companies give impecunious "ten claim David" every chance, even in our "loser pays" system, to get swiftly from his valid and infringed claim the full reward (including the right to exclude)that goes with it. The USPTO can fiddle with its Rules all it likes, but I doubt it will make much difference, as long as it's still burning in the US courts.

[anonEPA]

Ivan Examinervich - you are correct that prosecution is smoother elsewhere. However, I don't think this is due to the number of claims or length of the specification. One thing I find particularly frustrating in the USPTO is the invariable finality of the second action, even though solid arguments and/or amendments have been presented in the response to the first action (and no - in reality, they mostly don't raise "new issues".) In other Patent Offices, in contrast, there would be constructive dialogue with the applicant at this point instead of slamming the door.

If number of cliams is a problem, why not encourage multiple dependencies? It works perfectly well elsewhere.

[The_Cheshire_Cat]

CAN NEW RULES FOR PATENTS BE RETROACTIVE?

Doesn’t this provision in The Constitution, Article I, Section 9, Clause 3: “No Bill of Attainder or ex post facto Law shall be passed.” speak to that question? I don’t recall this Clause having been annulled.

Thinking about retroactive and “the exclusive right” provision in The Constitution’s Patent Clause, can an infringer who was permanently enjoined prior to the topsy-turvy turn in the USSC’s eBay debacle now seek “un-injunction” relief?

Thinking about the clear, unambiguous “exclusive right” provision in The Constitution, Article I, Section 8, Clause 8 (“the Patent Clause”), I know that provision has never been amended -- how does the USSC’s eBay zinger wash with Article V which describes the only lawful process whereby the Constitution may be altered?

Am I wrong to think that absolute authority comes from the Supremacy Clause, Article VI, Clause 2, and that anything and everything (such as 35 U.S.C. 283) in conflict with The Constitution or its Amendments is inferior?:

Article VI, Clause 2, “This Constitution, and the Laws of the United States which shall be made in Pursuance thereof … shall be the supreme Law of the Land” (emphasis on “made in Pursuance thereof”).

Or is it too early in the morning to pose such questions? Here is one more early morning question: Was the eBay ruling made in Alice’s Wonderland?

The_Cheshire_Cat

[hp]

The goal of this rule change is to streamline prosecution and reduce the application backlog?

Just wait until the number of applications going to appeal goes up by a factor of 10000.

All those Examiner's preparing countless formal Examiner's responses to the Appeal Briefs will thank USPTO management.

The end result on backlog/productivity/examiner turnover? ... devastating.

[Clifford Kraft]

So now, instead of drafting continuations and RCEs (which are easy), we will be drafting appeal briefs (which are hard and expensive). Being overwhelmed with appeals, the examining corps will have no choice but to re-open examination after the applicant's appeal brief (treating it like an RCE - this has already started). This will force the senior examiners to get involved in almost every case.

There is no way most of us are going to use that one RCE or continuation (assuming that's what comes down) without first trying an appeal.

[teegee]

Dear brother Ivan, I think is is safe to say all are for streamlined and effective prosecution and constructive dialog with the examiner's corps in US patent prosecution. Like hot apple pie on the fourth of July - who could be against it? That said, many feel that the new continuation rules address only half the issue - the real issue being - why are there so many in the first place? Arbitrary restriction requirements, refusal to allow claim amendments to focus the claims tight on the invention - again subject to arbitrary rejection - raises new issues objection - here's your final and a refusal to enter the amendment - file your con and get off my docket, double patenting rejections (which should have been abolished with the change in patent term amendments - i.e., 20 yrs from filing date all patents are now essentially terminally disclaimed), etc etc. This of course doesn't even begin to address what is now apparent to most practitioners - open hostility to the patent system by the current pto management and the Bush administration. For those with the temerity to actually enforce a US patent - just wait until the central reexamination unit gets a hold of you - it's a star chamber. You are presumed invalid unless and until you can prove to the board (now stacked as well) and CAFC otherwise. So no Ivan everyone that files a con is not jobbing the system and every patent that is enforced is not a patent troll or otherwise. It is very disturbing the amount of time uspto management is reading the press and the paid off opinion choir of endowed professors, and media reporters "the sky is falling" - and has lost faith in US innovation and inventors.

[Randall Svihla]

Ivan Examinerovich--Isn't it possible that the loss of many continuations and RCEs from your docket and the almost certain increase in the number of Examiner's Answers you will be writing will actually require you to work more voluntary overtime than you do now? Also, I've never understood why the PTO requires applicants to pay excess claim fees. I suppose the rationale is that applications with lots of claims take more time to examine. However, as I understand it, examiners get the same amount of time to examine an application no matter how many claims it contains. So, what do the excess claim fees actually pay for? It seems to me the better solution would be to keep the current claim system but give the Examiners more time to examine applications with more claims.

[fairexam]

I am reading this translated JPO rejection of five claims (in comparison to the US Application of 17 claims) that takes up less than a page. Maybe the Japanese language is very concise because my rejection took up 11 pages. But then I read the JPO rejection and all it does is say what the references teach and that it would "be easy" to combine them. Wow, imagine the reduction in backlog if examiners can crank out rejections like that without this TSM. Perhaps under the new KSR rulings, should we get that any day soon. And I have not heard any quality perception problems with the Japanese Patent system. What's more, their industries are doing quite fine and even kicking our butts!

[Who Am I]

The EX POST FACTO clauses do not seem to provide much help since they are clearly directed at congressional action as opposed to agency action.

[responder]

RE: The_Cheshire_Cat
The real question you should be asking is whether Ex Post Facto applies against regulations (CFR) or guidelines (MPEP) as opposed to laws (USC). If the rules changes are just to the MPEP then they are really just considered "guidelines" and interpretations of court cases and regulations, and are not per se regulations, as we think of them in CFR terms and they are not laws as we think of them in USC terms.

In all of the meetings and presentations, the PTO officials kept saying that these rule changes would be applied retroactively to all pending cases that have not had a first action on the merits - which means all of the backlog.

I'm just wondering whether their response bears any relation to the kind of law/regulation/guideline at issue.

[responder]

Feel free to appeal all you like Clifford. I have heard that the Board doesn't have the kind of case load that it used to and they don't really have enough to do now. I'm sure they'd welcome the work.
From what I've heard, Appeals really aren't threats to examiners. Take a look at the appeals statistics and you'll understand why.

[Who Am I]

Responder: The proposed rule changes would modify the Code of Federal Regulations (CFR). The ex post facto clauses have been generally limited to changes in criminal law as opposed to laws that are purely civil or regulatory in nature. The only real exception is when there is a (criminally) punative intent of a civil law. SMITH v. DOE, 538 U.S. 84 (2002).

[pds]

"So now, instead of drafting continuations and RCEs (which are easy), we will be drafting appeal briefs (which are hard and expensive). Being overwhelmed with appeals, the examining corps will have no choice but to re-open examination after the applicant's appeal brief (treating it like an RCE - this has already started)."

Within the last year, I've had at least 8-12 applications reopened after appeal (I've also had at least one reopened twice). The problem for examiners, however, is that they get a count when they write an examiner's answer or a first action, an RCE is filed or after an allowance/abandonment. As far as I know, reopening prosecution doesn't generate a count.

The great thing about when an examiner reopens prosecution is that I can immediately file an appeal again without paying the NOA fee or the appeal fee. Moreover, I already have a template for my appeal brief so it is easier to write.

If the continuation/RCE rules are as onerous as people think they may be, I think the law of unintended consequences is going to come down on the USPTO (and the examining corps) very hard.

[pds]

"But then I read the JPO rejection and all it does is say what the references teach and that it would "be easy" to combine them. Wow, imagine the reduction in backlog if examiners can crank out rejections like that without this TSM."

Many examiners already pay lip service to TSM so this wouldn't be much of a change. I've had examinations in which if you take out the canned language and eliminate the word-for-word recitations of the claims, the total "original analysis" constituted less than 20 words of text. I would wager that if you took out the canned language and eliminate the word-for-word recitation of the claims, that >50% (very concervative number) of the office actions I see contain less than 1 page of original analysis.

"And I have not heard any quality perception problems with the Japanese Patent system. What's more, their industries are doing quite fine and even kicking our butts!"

The reputation of the Japanese Patent system is definitely something that gets talked about around the water cooler in my office a lot. That and the reputation of the EPO in examining application is something that my friends e-mail each other about all the time .... talk about shooting from the hip ... must be an examiner ... the classic assertion without any factual basis.

[me]

Ivan-

Thanks for showing us why we have trouble with the office.

I propose all examiners and people practicing before them have J.D.'s. If Examiners understood the law we would all be better off - and attorneys think differently than Examiners and Agents as law school teaches you how to think like a lawyer.

[a newbie]

@fairexam,

"What's more, their industries are doing quite fine and even kicking our butts!"

Although I don't have exact statistics, isn't it possible that "their" industries are doing quite fine because one of their biggest markets may in fact be US and not Japan? Patents are most important in the relatively big markets. So long as you get enough protection in US, potential drawbacks in other national patent systems are not very significant.

[SomeExaminer]

I realize that this is mostly an attorney-focused blog and therefore I gladly appreciate your criticism. However, please stop crying about arbitrary examiner responses when we could just as equally complain about crazy attorney arguments, worthless IDS references and large claim sets. Waa, Waa. We are all people and we all make mistakes. Not all examiners are bad and not all attorneys are out to screw their clients.

I feel that these changes are not really in either side’s best interest. Closing prosecution early hurts the process of focusing claims. Isn't helping the applicant why we are here or is it just a matter of winning?

[Enuff is Enuff]

Will the PTO now move away from their idiotic restriction practice of restricting apparatus and method claims directed to the same subject matter? This is probably one of the reasons for the number of continuation applications.

[johng]

"The great thing about when an examiner reopens prosecution is that I can immediately file an appeal again without paying the NOA fee or the appeal fee. Moreover, I already have a template for my appeal brief so it is easier to write.

If the continuation/RCE rules are as onerous as people think they may be, I think the law of unintended consequences is going to come down on the USPTO (and the examining corps) very hard."

Thank you pds. You've given me reason to carry on. Yes, the examiners are in for a rude awakening. De facto RCE's without counts. Hee hee hee.

[pds]

"I have heard that the Board doesn't have the kind of case load that it used to and they don't really have enough to do now. I'm sure they'd welcome the work."

Au contraire my friend. I recommend that you take a look at the most recent reports:

http://www.uspto.gov/go/dcom/bpai/docs/process/fy2006.htm
http://www.uspto.gov/go/dcom/bpai/docs/process/fy2007.htm

In October of FY 2006 (which I believe is October of CY 2005), the cases pending were 873.
As of February of FY 2007, the cases pending before the board were 1739.

For the last 12 months, it looks like that the Board, on average, is disposing of about 2/3 of the cases it receives on a monthly basis.

For FY 2005, cases received were 2834, and cases disposed were 2937.
For FY 2006, cases received were 3349, and cases disposed were 2874.
For the first five months of FY 2007, cases received were 1324, and cases disposed were 942. (For comparison purposes, for the first five months of FY 2006, cases received were 1240, and cases disposed were 933).

I wonder what will happen to those numbers if the use of RCE are sharply curtailed?

My guess is that anybody who ever had the inclination to be an administrative judge with the BPAI should start checking the help wanted pages around August/September ... it looks like the USPTO may be hiring shortly.

[Brad Crawford]

Prediction:

The revised rules will not work the way the USPTO hopes they will.

[pds]

In case anybody think I've been coming down too hard on examiners, I want to make it clear that I don't blame the examining corp for the problems at the USPTO.

I've written this before on this board, but I want to repeat it here.

These are necessarily original ideas, but this is what I would suggest:

1) Stop diverting funds from the PTO
2) Give examiners more credit for cases with more claims and/or in more difficult technologies
3) HIRE MORE EXAMINERS!!!!! If the PTO has to pay more to attract quality examiners, then I don't have a problem with it.
4) Give examiners more time to examine/search applications
5) Give examiners REAL TRAINING.
6) Teach supervisors how to teach .... I put a lot of the blame on SPEs that rubber stamp office actions without little to no substantive review. Another one of the problems is that I think many SPEs don't have a sufficient grasp of the law to give proper guidance.
7) (Not applicable to art units, but addresses an issue that is personal to me) Stop teaching examiners outmoded law with regard to 101 rejections. 99.9% of the 101 rejections I see have ABSOLUTE NO BASIS in law. It just wastes both the examiner's time and my time responding to these rejections. When forced to, I have appealed EVERY 101 rejection that I have received, and not one of these rejections has made it past the appeals conference.

[Steve Morsa]

Doll and Dudas should be fired immediately and replaced with a couple of 15-20+ year experienced and respected PTO professionals of proven knowledge, character, and ability.

One of them should be Greg Aharonian.

The patent field/industry is too important to be left to polital appointee hacks--Republican or Democrat.

Let the continuation lawsuits begin.

[CaveMan]

That's right let's "harmonize" with the rest of the socialist world that fails to respect or protect property rights... Now THAT'S progress.

God forbid we do things "differently" in the greatest bastion of capitalism the world has ever known...

[johng]

I think we're way past fixing the PTO. Can it be taken over by some receivership - like DC after many years under the leadership of Marion Barry? If not, can we send in the Marines? I'll be in the first wave!

[SF]

If the USPTO is hell bent on affecting continuation practice, I think the best compromise approach would be to require a detailed analysis of the cited references and the claims for every continuation past the first continuation. (The USPTO proposed requiring this analysis for applications over ten designated claims.) While continuations routinely require little additional effort, this isn't always the case when, for example, applicants pursue broader claim scope or different inventions. This compromise approach would ensure that the continuations would predictably take less effort, allowing for more efficient resource allocation at the USPTO.

However, any rules that prevent the applicant from keeping a continuation pending, and thus preventing the applicant from fully leveraging the 20-year statutory term, short-changes the applicant in the quid pro quo of the patent system. If the public gets the full benefit of the patent's disclosure, the applicant should get the full benefit of the 20-year term, which is best accomplished by keeping a continuation pending.

[gf]

This will likely weaken patents, since a potential infringer may discover a "design around"/invalidity appraoch, while the patentee will not have the opportunity to draft new claims (no continuation available) to specifically address the infringement.

Also, if there are only 10 claims, then large Markush groups in claims will likely be easier to invalidate. Perhaps many/most inventions can be claimed in 10 claims, but certainly not all inventions...

[anonEPA]

CaveMan - I don't see any calls to harmonize here. The assertion that outside the US, only a limited number of claims is examined is wrong, at least in as far as the UK and EPO are concerned, and I can't think of other jurisdictions where this is the case. Nowhere else has continuations, so proposals to limit numbers of them also won't bring about any harmonization.

[me]

Agreed AnonEPA, but the definition of continuation as implemented by the Office in the original rules did have sweeping effects on divisionals as well - which are avialable in the EP.

[Points to Ponder]

A couple interesting points.

(1) Charlie Van Horn's description of the situation overlooks a key fact. *Substantial* "details of the final rules were disclosed." If the proposal had been substantially modified, the PTO would have had to send the rules to another round of Notice and Comment, not OMB.

(2) Ivan Examinerovich and MaxDrei. The reason U.S. applications have many claims is the very "claim centric" way we deal with claims. As MaxDrei points out, elsewhere courts apply a "substantial 'content'" analysis. In the U.S., the analysis is exteremely formalistic, driven by the precise words of the claims. To protect an invention, a pante must have independent claims to handle all of the following kinds of issues-

• various phases of the life cycle or operating cycle of the invention
• territoriality issues and divided infringement issues such as imports, exports, international communications systems, temporary presence of vehicles, components supoplied by several vendors, etc. For example, in a communications system, it can be crucial to have separate claims directed to the sender, the receiver, and the switch that routes messages between them.
• exhaustion, repair, replaceable or consumable parts
• literal coverage of foreseeable equivalents – thereby simplifying complex “doctrine of equivalents” cases to clear literal infringement cases
• claim construction rules for means-plus-function, product-by-process, functional apparatus, structural apparatus, method-of-making, and method-of-using claims
• various limitations on damages
• limitations, such as intent, on the doctrines of induced or contributory infringement

That's just the way the law is. Any attorney who does not present enough claims to cover all these facets is not doing the client a service.

Everyone currently in the PTO is legally barred from having any practical experience with the economic and practical reality of patents post-issue. There are only about 3-5 people in the entire PTO who gained such experience before joining the PTO, and none of them are in policy-making roles, and have only limited ability to share their experience with those who do make policy or examine applications.

These three rule proposals reflect nothing but the ignorance imposed by the PTO's isolation from the real world of patents.

Randall Svhila points out an obvious component of the correct solution: examiner compenstion and time budgets should be tied to filing fees. Applicants allocate their resources according to the importance of the appliation and invention, and filing fees are an awfully good proxy for that allocation. Why is the PTO so resistant to allocating its resources by importance, and giving value according to fee paid?

(3) Retroactivity. The Supreme Court's procedural law (about which the PTO doesn't give a rat's ass) is as follows:

Retroactivity is not favored in the law. Thus, congressional enactments and administrative rules will not be construed to have retroactive effect unless their language requires this result. ... By the same principle, a statutory grant of legislative rulemaking authority will not, as a general matter, be understood to encompass the power to promulgate retroactive rules unless that power is conveyed by Congress in express terms. ... "The power to require readjustments for the past is drastic. It ... ought not to be extended so as to permit unreasonably harsh action without very plain words". Even where some substantial justification for retroactive rulemaking is presented, courts should be reluctant to find such authority absent an express statutory grant.

A rule that has unreasonable secondary retroactivity -- for example, altering future regulation in a manner that makes worthless substantial past investment incurred in reliance upon the prior rule -- may for that reason be "arbitrary" or "capricious," see 5 U.S.C. § 706, and thus invalid.

Bowen v Georgetown University Hospital, 488 U.S. 204, 209, 220 (1988).

Notice that "retroactivity" is defined by reference to the actions and reliance interest of the regulated party, not the actions of the agency. If the PTO attempts to apply the rules to applications already filed, they'll have "no substantial justification" and will end up paying attorney fees under the Equal Access to Justice Act.

(4) "responder." "I have heard that..." The facts are easy to check - why rely on "heard?"

http://www.uspto.gov/web/offices/dcom/bpai/docs/receipts/fy2007.htm

The Board's backlog is up 31% since the beginning of the fiscal year - FIVE MONTHS. At that rate, the Board's backlog will essentially DOUBLE IN A YEAR, even without the new rules. Also, what basis do you have for your confidence in "the appeals statistics?" "Appeal statistics" on the multiple levels of review are combined at page 3 of this document-

http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/heritagewoods_con.pdf

Examiners have not been unable to reach even a 0.200 batting average in any year for which statistics are available. An 80% failure rate is apparently the PTO's definition of "unprecedented quality."

The reason that appeals have no threat to examiners is that the PTO has no system of accountabilty for bad rejections. Correcting that is another obvious component of a rational response to the PTO's perceived propblems.

[Scott]

As long as you have politicians and idiots running the PTO, you will get ideas tailored to their selfish goals. None of this will improve patent quality, it is about reducing a backlog so that these guys can look good and move up the ladder to their next gig.

Doll said this morning that the PTO can handle 300K accelerated exam cases, meanwhile a few hundred have been filed and are already sitting in 5 month old piles at the PTO. The level of incompetence in these policy makers is staggering.

[clifford]

Points to ponder - excellent post. All of course management decisions - and well within the pto's power to implement - and might have some positive short and long term results. I think, however, it serves the purpose of the current administration and pto management to keep the system as broken as possible.

Did you know the pto has all hands meetings to discuss patents that are in the news and being enforced? The leader will then say - i'm not going to single out the examiner who issued this patent - but this is not the kind of work produce we should be generating. This is the type of peer pressure the current management is about in the daily browe beating the life out of the carreer corps. There is no sense of pride in having a patent issued and successfully enforced.

[Alun Palmer]

"I propose all examiners and people practicing before them have J.D.'s. If Examiners understood the law we would all be better off - and attorneys think differently than Examiners and Agents as law school teaches you how to think like a lawyer."

No wonder you use a pseudonym. Speaking as a US patent agent, that's fighting talk! It's also not remotely germane to the topic of this thread.

Law school may indeed teach you how to think like a lawyer, but it rarely teaches you any patent law. The ABA curriculum is so crammed with other stuff that you might be able to fit in 4 credit hours of patent law if you are very lucky, in other words much less than a diligent patent agent (or attorney, for that matter) might pick up by independent study. What's more, most of the world manages perfectly well with a patent profession made up of patent agents (although often known as patent attorneys to confuse Americans).

In a sense you have a point though, because examiners rarely show any great knowledge of patent law, and often ignore entirely perfectly sound legal arguments. I would have hoped that they would hit the case books or the Internet to refute me when I cite a case, but the usual result is that they ignore that part of the response entirely. I find that particularly odd, as I know they receive classes in patent law as part of their training. Perhaps the explanation is that they are also indoctrinated to ignore any case law that isn't in the MPEP, as somehow not approved by the management, or maybe it's just that they face very little in the way of a downside by simply ignoring an argument instead of trying to rebut it.

[Blaise Mouttet]

"I propose all examiners and people practicing before them have J.D.'s. If Examiners understood the law we would all be better off - and attorneys think differently than Examiners and Agents as law school teaches you how to think like a lawyer."

I would argue that it is the lack of understanding of the technology at issue rather than the law that causes the most problems during prosecution. The Examiners tend to misinterpret the patent application while the Agents/Attorneys write overly broad claims which those of ordinary skill in the art should have easily recognized as well known. It seems to me that a lot of the problem in the patent system is that too many lawyers and not enough inventors are involved in the process.

While inventors may not understand the exact legal definitions of utility, novelty, obviousness, and enablement, they are certainly more qualified to understand what is inventive in their respective technologies than any Examiner, Agent, or Attorney could ever be. Hopefully with the Peer-to-Patent project and other initiatives inventors and technologists will become more involved.

[ahha]

I suggest that BEFORE the first Office Action is sent that the examiner contact the attorney/applicant by phone and spend 5 minutes discussing what the invention is about. Hopefully this reduce the near universal pratice of pro forma keyword search art rejections.

[me]

Well, since I am a Ph.D., an inventor, practiced as an Agent, and now am an attorney, I have experienced the process at many levels. There are certainly extremely good agents out there, but on the whole they are less skilled that the lawyers I have worked with when it comes to how to handle examination. Just my experience. I also note I practice in the Trademark area (where only lawyers practice) - and although there are significant differences in examination, on the whole it feels more like European patent examination (i.e. well done and more competent than U.S. patent examination) and lawyers do have a much better ability to analyze legal arguments than any non-lawyer. I can't tell you how much contract law, constitutional law, and all the rest help when you read 35 USC or 37 CFR. I DO approach them differently than I used to.

Examiners strike me as folk who should be MORE knowledgeable than I am (as they acting in some ways to judge) but they seldom are. They often cannot even use the MPEP cites correctly. Today I had an Examiner argue that a modification from a primary hydrogen to a halogen was obvious (in a complex biotech context) - with no citation to art, thus they sometimes can't even do the science.

I post anonymously as well, it allows me to be honest (as long as I can trust Dennis to hide the address)!

[me]

Blaise-

Although I agree in principle, the idea that any inventor off the street can come close to the definition of nonobviousness (which is primary to what is inventive) is almost laughable. We use the term in a legalistic way that is very different from general usage. If you use the general definition, almost nothing is patentable. The recent In Re Kahn decision does a great job describing the legal meaning.

[metoo]

What if the PTO simply submitted the proposed new rules to the OMB, knowing that the OMB will reject them, simply to appease those that are pushing for these changes? They can then say sorry, but we tried - you need to take your proposals to Congress to have them implemented.

[me]

Just to refure a couple more points:

1) Too argue that the quality of the examination and the examination corps has nothing to do with the need for a generous RCE practice is just strange to me, of course they are tied.

2) Any law student interested in patent law can get alot more than four hours of it - I took 11 of straight patent, 4 Trademark, and 3 Copyright.

[me]

Where do you live metoo? Nirvana? Here's hoping you are right!

[anoninventor]

To Ivan Examinerovich - As an inventor, these rule changes do NOTHING but vastly increase my cost to obtain appropriate protection for my work. Your statement that "I haven't seen a single case that couldn't be summed up in ten claims" is one of the most absurd statements I've ever heard. When I apply for a patent, the patent generally includes disclosure of a basic concept and variations on the methods, apparatus, systems, kits, and tautology for several generations of products based upon the basic concept. 3-5 generations, 5 distinct claim sets per generation, and generally 3-10 individually distint and seperately patentable features or combination of performance critical features per generation that are unanticipated by prior effort in my field.

10 Claims????? Try 60 independent claims at a minimum. And now you, as an examiner, are going to get them all thrown in your face right in the first application - You chose to drink the Cool Aid, baby, have fun with the consequences.

A great point was made above very much in your favor, however. I strongly agree that examiners should be compensated based on the number of claims they have to review - hell, I pay for that service and all I get in return is poorly conceived restrictional requirements from a guy who, understandably, wants to dodge a pile of overtime he doesn't get paid for and can in fact be penalized for spending.

The bottom line - if Dudas is successful in driving the continuation rules through, he will have accomplished nothing but vastly increasing cost, decreasing legally viable opportunity for inventors, creating a huge backlog given the bolus of applications that'll be submitted in response to the rule change, and increasing the time from conception to patent application by a solid 3 months due to having to write all the damn claim sets prior to submission of the first application. It also guts the interference process which is effectively the only way for an inventor to correct claims erroneously issued to a junior party due to insufficient prior art research by an examiner or junior party attorney.

For professional inventors, THE PEOPLE THE PATENT SYSTEM WAS CONCIEVED OF TO SERVE, this blows chunks.

[jphudy]

Being an Examiner, I see first hand what a huge amount of cases are CON and RCE cases. There are certain art groups at the PTO that work exclusively on CON and RCE cases to no end. That is, they begin a career at the PTO, open 40 or so cases, and ride the CON and RCE wave into eternity. Some of these examiners are good friends of mine.

When I say that I'm starting "x" new cases a week, they look at me as if I'm nuts and say that I'm going to overload my pipeline. They actively avoid new cases even when there is a lull in amendments because they can't handle any more than the 40-50 cases they already have open!! This is because their cases NEVER close!! It's just another after another, after another RCE.

If the PTO wants to open new cases in their field, they must hire new examiners.

As far as making $$ goes, this is great for the PTO and the examiners. As far as the backlog and pendency, it's terrible. It's not a matter of hiring more examiners. The fact is that most engineers would rather put a pencil thru their eye than examine patent applications. Thus, they quit after a year (among other reasons).

We may be looking at more appeals, but the fact is that cases will be DISPOSED - they will come to an end, and another RCE or CON is not going to clog up the pendancy of other apps.

[Steve]

I am not sure what art you are talking about, but 60 independent claims is absurd, Just the cost of 60 independent claims is absurd.

If your application truley contains "3-10" distinct inventions they should each be filed in their own application, even if they all have the same specification...after all, by telling us they are distinct you are admitting they can and should be restricted out. One invention per patent. Furthermore, if all are filed on the same day, potential prior art issues relative to each other can be eliminated and none needs to claim priority to the other, so the new rules may not come into play.

I was a mechanical examiner and now work for a corporation. I too was trained under the rubric that if an attorney could not describe his invention in 10 claims, he did not know what his invention is. I agreed with it then and still. Certainly helps keep the examiner focused.

Just some thoughts

[Blaise Mouttet]

"..the idea that any inventor off the street can come close to the definition of nonobviousness (which is primary to what is inventive) is almost laughable. We use the term in a legalistic way that is very different from general usage. If you use the general definition, almost nothing is patentable. The recent In Re Kahn decision does a great job describing the legal meaning."

If the above is true it demonstrates to me that there is something wrong with the legal definition of nonobviousness. If the legal definition of obviousness is not at least attempting to approximate what one of ordinary skill in a particular art would consider obviousness than what good is it?

[SF]

Ivan Examinerovich and Steve think that 10 claims is sufficient. Please read "Points to Ponder" comments (specifically point 2) at Apr 12, 2007 at 11:16 AM above.

[SF]

Scott wrote, "As long as you have politicians and idiots running the PTO, you will get ideas tailored to their selfish goals. None of this will improve patent quality, it is about reducing a backlog so that these guys can look good and move up the ladder to their next gig."

Amen. That's why the USPTO will never give examiners more time to examine cases with increased number of claims -- doing so would increase pendency.

[SF]

pds wrote, "I think the law of unintended consequences is going to come down on the USPTO (and the examining corps) very hard."

Absolutely. For example, rather than filing the same specification with several different sets of claims, applicants will file the same sets of claims with rifle shot specifications. The USPTO doesn't understand that applicants will adjust to ensure they maximize their intellectual property.

[Steve]

SF,

I did read that post and its linked pages.

First, I don't say 10 claims as a limit. It is a guideline.

As to "point to ponder", I do not disagree that lots of considerations go into claim scope. We can spend 2 weeks fine tuning one independent claim. However, just because there are a lot of considerations does not mean there needs to be a lot of claims; there just needs to be well written and thought out claims. However, I guess it is easier just to through 60 indpendents at a dartboard to hope one covers the infringer instead of laboring over that perfect claim that captures 90% of your concerns.

I think that unfortunately, the entire US legal system, including its patent system, has led us to an overkill mentality rather than a value mentality.

[Steve]

SF, what do you mean file the same claims in multiple applications. Ain't that an ethical no-no.

[SF]

I meant "those same sets of claims" which were different from each other.

[SF]

Steve wrote, "We can spend 2 weeks fine tuning one independent claim."

One of the benefits of working in house!

[Malcolm Mooney]

"I guess it is easier just to through 60 indpendents at a dartboard"

Hmm, this analogy sounds vaguely familiar ...

[Malcolm Mooney]

"SF, what do you mean file the same claims in multiple applications. Ain't that an ethical no-no."

I don't think it is unethical if the claim terms are defined differently in the different specifications ...

[ahha]

The bio field is going to die with some of these changes. Bio aps have page after page of references, etc. The practitioners I have talked to, have decided that trying to change the USPTO via the USPTO is not going to work. What will work is contacting your congressional reps and letting them know how you feel. Letters (smail) is considered much more potent than email (so print and smail the email you send). Here's a link to find the appropriate people.
http://www.cotton.org/issues/congress-contacts.cfm

[jphudy]

Good luck trying to lobby for your patent law changes... imo. The fact is that you attny's don't want to compromise. I understand that you want the best and most possible protection for your clients. What you really fail to realize is that there needs to be some MAJOR upheavals in the PTO to solve the backlog problem. Hiring more examiner's is NOT an option or a solution. What is needed is a way for the same number of examiners to be able to accomplish more work.

Stick to the fact that there can't be more examiners; then, give some of your own ideas to fix the backlog problem.

[Joe Schmoe]

At least PTO management is doing something. They are not making it impossible to have more than 10 claims, 25 IDS references, or one RCE or continuation, they are just making it hard. They do not appear to be overstepping their statutory authority as they are not imposing hard and fast limits. If something isn't done, I believe pendency will get MUCH worse than it is now, forcing Congress to get involved.

[Points to Ponder]

Steve -

So you're happy with 90% coverage? So let's see, you're willing to give up 10% of your invention to save what, maybe $1000? Do you tell your inventors that you value their inventions at about $10,000 each? I'd agree with you, that for a $10K invention, 60 claims would be absurd.

But most of us have clients who would kill us if we told them we were leaving 10% of the invention on the table for competitors.

My claims are as "finely tuned" as anyone's, but they're finely tuned at a patent that is so strong it won't have to be litigated. "Peace through strength" - my patents are scary. When my patents do get litigated, it's by Cravath Swaine & Moore, Kirkland & Ellis, Willkie Farr & Gallagher, Orrick Herrington, Finnegan Henderson, Fish & Richardson, and Heller Ehrman - the list of lawyers who've taken or prep'ed my deposition is pretty impressive. My patents cover all of the facets of the law and the market. My patents don't just hang on a wall.

For a patent to mean business, it has to have 5 or so independent claims for permutations of each invention (e.g., cases where only one of several computers is in the U.S. and the others are overseas, making sure I'll have direct infringement by an undivided infringer without having to prove up intent for contributory or induced, method, apparatus, and to cover all the potential exhaustion, repair and replaceable part issues, and a means-plus-function to cover the direct copy), and I can usually pull 2 3 or 4 inventions out of the distinctions over the prior art.

I had one large computer project that generated 80 or so distinct inventions. I filled about 350 independent claims on one 250-page specification (any one invention was part of the best mode of 5 others, so they had to be disclosed together), the claims split among about 25 applications. I have to agree with you, 60 independent claims would be absurd. I disagree with you that 60 independent claims is high.

Any attorney that stops at 10 claims is taking a huge chance that no infringer is ever going to do a better prior art search than the examiner did, that no one will ever want to practice a part of the invention outside the U.S., that there is no repairable part, that there will never be an inducing or contributory infringer who didn't know of the patent, that all infringement will be completed by one party, and that all equivalents were unforeseeable. In other words, a 10-claim patent is unlikely to capture any significant fraction of the value of the invention. Steve, if you think you can capture 90% of most inventions in 10 claims, you're terribly naive. Start reading the Federal Circuit cases as they come out, and tell us what you think in a year.

These rule proposals apparently start from a belief that inventors are the problem - they should stop being so damned inventive, and stop generating inventions that are worth protecting. I disagree.

My clients are happy to pay the PTO its full costs to get their applications examined. It would be nice if the PTO had the integrity to do its statutory duty and examine them.

[anoninventor]

Points to Ponder - thank you for wrapping up my point and putting a bow on it. Very few examiners have the experience to appreciate the simple statement "any one invention was part of the best mode of 5 others, so they had to be disclosed together", or that, hell yeah, I would be very irked if you if you were my attorney and left 10% of a $4B invention on the table for public use.

JPHudy - a question for you. Why do you say the PTO will never hire more examiners? To my way of thinking, the demand clearly exists for the services and the PTO is one of the few federal services that is both consumer fee based and profitable. It seems to me the government should jump at the chance to staff up sufficiently to keep pace with demand. If you pay the examiners on the basis of the scope of their work (not meaningless metrics contrary to basic mission of the patent office).

Innovation begets innovation geometrically. The US economy relies on intellectual property (more than 80% of the value of S&P 500 companies is based on IP) to remain competitive. The number of inventions and the number of patent applications will continue to rise. If the USPTO doesn't staff up dramatically, and train and motivate is examiners properly, we will all get hurt badly.

[MaxDrei]

Questions to "Points to Ponder". 1) How many words does it take, you to get across your inventive concept, to one in your peer group? Not 250 pages of text, I suppose. 2) Isn't the intended reader of a US patent the PHOSITA? 3)Aren't the courts everywhere else in the world looking at a patent in suit with the knowledge of the PHOSITA? 4) How much bulk does that pointless little US speciality "Best Mode" add? 5) How much of the claim bulk is irreducible minimum, and how much only because today's US patent system is an arcane game, incomprehensible to the intelligent layman, played out as described by Charles Dickens in London 150 years ago. 6) How many claims are in your apps outside USA 7) What evidence do you have, that the abbreviated foreign claims set is inadequate or ineffective? 8) Do you want the US patent system to be reformed?

[AnonExaminer]

From other threads my reputation as a long writer will probably proceed me… but if not, consider yourself warned.
I realize this is mostly a thread for lawyers to rant, but in case anyone is actually taking any of this seriously, there are some points to consider.

Solutions to problems often by their nature require compromise. At this point, under the current system, filed applications are growing at a rate that threatens to overwhelm the PTO. Pendency has increased to sometimes ridiculous levels where patents are allowed up to 10 years after filing. This does not serve to put the public on notice of what is and is not in the public domain. What is your real solution?

From the suggestions posted above:
1) Stop diverting funds from the PTO
3) HIRE MORE EXAMINERS!!!!! If the PTO has to pay more to attract quality examiners, then I don't have a problem with it.
5) Give examiners REAL TRAINING.
Fine, but the PTO has nothing more to spend the funds on at this point. They have money allocated to hire examiners but can’t find enough qualified people to hire. They are hiring 1000 new examiners every year. That’s over half of the workforce in 3-4 years. Do you know any corporation that has done this and maintained any semblance of quality? Any examples at all? If Ford went out and hired 50% of their workforce in a 3 year period with absolutely no previous experience, would their cars even run off the assembly line? They had to create a separate training facility to train all the new examiners outside of their specific field. This moves away from the more 1 on 1 training examiners have received in the past to a teacher classroom setting used now. They didn’t have a choice on this step, they simply don’t have enough examiners to train the new examiners. New examiners often require 2 full years of assistance to gain real autonomy. In growing areas of the art, junior examiners out number primaries 4-1 or more. How can the office hire more people? Isn’t it counter productive to quality to grow a workforce this fast? And how can the office spend more time on training? New examiners are already in the academy for 8 months before entering their actual art unit. How many other American companies can afford to hire college graduates and then send them to a training academy for their first year with the company? Further, after training new examiners they can then earn 20-30k more by working as agents. How can the office ever compete with that type of salary? Examiners already earn more than other government workers at the same grade level, but a 20-30k raise would be absolutely out of the question. It would never be a political reality. And even if it were, examiners are upward limited to 130k after a set number of years. New patent attorneys are earning 30k more with absolutely no examining experience or training.
This has been said before, but never really understood by attorneys in the field, the office cannot hire itself out of the problem. The growth of applications has simply swamped the offices ability to examine those applications. This is not a problem of just RCEs, Divs, Conts, and CIPs. Those actions together account for no more than 30% of the total filed applications.

2) Give examiners more credit for cases with more claims and/or in more difficult technologies
4) Give examiners more time to examine/search applications
With what? This time and credit has to come from somewhere. Should business methods now take 15 years or 20 years to receive a patent? The office is trying to decide ways to make examination more efficient not take more time. The time gap is never going to close. My prosecutions friends have 20 hours to write up an app and often 8 hours to work on responses. A standard prosecution might involve 40 hours of junior attorney work along with 2-3 hours of senior attorney work. If those attorneys also had to search we could assume another 10-15 hours for that activity. The examiner has 15 hours in total. And half of that time is spent searching. At what point do you think examiners can do a comparable job under the current system? Will you also give examiners 50 hours per action? That would increase the backload 300% and the office would have to hire 15k new examiners just to not fall further behind. We can also expect a 3-fold increase in fees. Do your clients want to spend 3 times as much? How about small inventors? Is this the end to small inventor?

6) Teach supervisors how to teach .... I put a lot of the blame on SPEs that rubber stamp office actions without little to no substantive review. Another one of the problems is that I think many SPEs don't have a sufficient grasp of the law to give proper guidance.
My supervisor has 5 primary examiners and 20 junior examiners. Each week about 80 actions are turned in by those juniors. Of those, about 50 are ‘reviewed’ by the SPE. Now, how much time do you think should be allotted to this review? Keep in mind that SPEs must also review primaries work, review the remaining junior examiners work, keep sufficiently trained themselves, and actually do the day to day supervisory jobs of SPEs. In reality, only about half to a third of a SPE’s time can really be allocated to review. We could make more primaries SPEs, but do you have enough quality primaries? And SPEs don’t examine, so every primary you promote is another 100 apps a year that don’t get examined. Hiring more junior examiners just means that SPEs will have even less time to review the work. Keep in mind it takes 5 years for a new hire to work up to a primary, and generally another 5 years to become an ‘expert’ in the art. By the time they are an ‘expert’ they can make 50-70k more by leaving the office. Now, how much time would you like SPEs to spend learning the law? Should they review 20 less cases so that they can spend more time understanding the law? I can tell you now that they already spend probably 10 hours a week in that pursuit. Should they spend more? And even if they do, how much time should they spend then teaching this to the junior examiners?

7) (Not applicable to art units, but addresses an issue that is personal to me) Stop teaching examiners outmoded law with regard to 101 rejections. 99.9% of the 101 rejections I see have ABSOLUTE NO BASIS in law. It just wastes both the examiner's time and my time responding to these rejections. When forced to, I have appealed EVERY 101 rejection that I have received, and not one of these rejections has made it past the appeals conference.

This is really AU specific. But the general point is important. The office teaches from the MPEP for a reason. It can’t put every examiner through law school. They simply can’t teach an examiner how to understand and properly read case law. I also doubt they want those examiners spending hours daily running through Westlaw or Sheperdizing those very same cases. It’s also a problem of consistency. Each examiner should examine under the same guidelines.

I realize this sounds like a rant, but I hate the couch quarterbacks who throw out these solutions as if the problem were simple and the office is simply too dumb to grasp your brilliance. The office is not dumb. It has investigated a number of solutions, not just for now, but for the foreseeable future. The drastic growth in the value of IP can only mean an increase in the filed applications. The US is for the first time in its history an information economy. What worked in the past simply will never work again so long as that fact remains. The office knows it cannot grow as a solution to those problems. It also is trying to balance the desire for a quality exam with the entry cost for that exam. Raising the entry cost pushes out small inventors. The desire is not to have a perfect system, one simply doesn’t exist. Some inventions and technology fields will absolutely not benefit from a change, but does that mean a change shouldn’t be made? Other fields are currently suffering.

So here it is…
You need to examine about 30% more new applications per year.
You can’t hire more than 15% of your workforce per year, and those new employees will only be able to work at half the production of your 10 year experienced workforce. Plus, you must dock that same experienced workforce 15% of their production for the first two years of each new employee’s career to train them.
Each new employee will need to be able to eventually understand both a highly technical field, for which there is no sufficient undergraduate degree that prepares them, and a highly counter-intuitive legal concept, for which few people in with their background have an aptitude for.
You can only pay those employees 30-70k less than they could make if they quit your job and worked in private business
You can’t let the delay to first pick up an app extend much beyond its current status or risk being displaced from the economy.
You have to do so under the rules passed down from SCOTUS on what types of things are patentable regardless if you agree or not.
You must do all of this under a fixed budget.

Solutions?

If examiners can’t spend more time for examination, and more work is needed to meet a minimum bar of quality, then shift some of the burden of examination back to the private realm where resources far outstrip the office.
Force inventors to more clearly articulate their inventions and direct their claims towards a scope more consistent with those inventions.
Change the way the system currently proceeds with patent suits.

I think all three will eventually take place. Limiting the number of reviews by the office forces applicants to bring their patentable issues to the forefront earlier in examination. It might also require at least a cursory search of the prior art prior to filing. Applicants will be forced to fully consider the complete scope of all art on the record at each stage of prosecution or risk losing a precious action along the way.
I’m a good examiner, my quality reviews play that point out, and I can tell you that in the last 100 apps I have searched, only about 10% included any patentable subject matter as originally filed. Only 2 apps have had all claims in a condition for allowance. This is a wasted action and a fishing expedition. In an art where 80% of all apps eventually lead to an allowance, this statistic just highlights the fact that attorneys are not either examining the art in any way prior to filing or have no desire to describe the actual invention unless forced to do so. Ideally the courts would punish these overly broad applications by overturning the entire patent (if allowed in that state) upon review, but until that day, examiners are essentially writing the claims for applicants. I don’t run to 4 or 5 RCEs because I enjoy them. My actions are never overturned and are rarely if ever challenged. Applicants just continually, and marginally, amend their claims not in a way that pertains to the disclosed invention, but in a periphery way that avoids the cited art. This just forces me to find additional art to escape the minor (and unrelated) change and then go final. I can assure you that this situation would never occur with limited chance to continue prosecution. As for increased BPAI review, I welcome that situation. I have never been overruled either in appeal conference or at the board. Pushing to the board earlier and more often would at least settle some genuine issues of fact or interpretation and clarify the record for third parties reviewing the patent at a later date. The office would also have a greater resource to identify examiners that routinely get overturned and need additional training or a change in profession. Further the shifting sands of RCEs and minor amendments do nothing to aid in the understanding of the claim interpretation. Limiting claims to be examined serves the same function. Properly written claims can easily encompass the full scope of the inventions in 10 claims. I absolutely understand the issues raised above about fully establishing the scope of an invention in all conceivable terms and steps. However this is not a problem of examination, rather one of interpretation. DOE protects those same inventions when appropriately applied. Rather than burden the 300,000 or so examinations wouldn’t it be more economical to alter the few hundred litigated cases and how those claims are interpreted? Why not change the courts and let the higher resource areas (inventors, firms, and judges) the task of fairly establishing the DOE and applying it to cases. An invention should not be written to claim all possible variations. It only clutters the record, confuses third parties, and burdens the high traffic part of the process. Claim the important parts of the invention, the best mode of operation, and any directly related and non-obvious variations. Examiners will do a better job of searching for the subject matter and the patent will have a greater probability of actually clearly identifying how the case is patentable over the prior art.
I don’t agree with the IDS rules, so I won’t try to defend them here. However, it’s clear that this is also an attempt to burden shift. While I have heard numerous, and accurate, concerns about inequitable conduct, I think much of this would be solved by independent third party searches. There isn’t really a huge market for these types of cursory searches at this time, but I think such a search before each app could be done cheaply and aid in both claim construction and the examiner’s search. Because of the independence, it would unlikely raise the issues of inequitable conduct.

Ultimately there are no easy answers, but the sky is falling hysteria surrounding the changes really is disingenuous too. The patent office decides how patents look in many ways. If they change this look, then the courts and public will absolutely adjust to accept these changes. There is simply too much money for such a change to not occur.
-M

[Luke Ueda-Sarson]

A thought-provoking post, AnonExaminer.

Examining time per application won't be getting any better in the future it seems, thus you poist:

"Solutions?

If examiners can’t spend more time for examination, and more work is needed to meet a minimum bar of quality, then shift some of the burden of examination back to the private realm where resources far outstrip the office.
Force inventors to more clearly articulate their inventions and direct their claims towards a scope more consistent with those inventions.
Change the way the system currently proceeds with patent suits."

Option 3 won't be happening - patents are part of the global economy, and indeed, the oldest multinational treatied activity going.
Option 1 is already happening, at least in some places - but this is just really reshuffling "reponsibility" around, rather than actually making nay substantial change.
Thus we turn to option - which brings us to the pin-citing thread of a couple of days ago. IMO it makes a lot of sense - but it seems a lot of patent attorneys would rather put their hands into boiling oil than actually help the examination process along by tying themselves down with useful prior art citations. But that's only logical if the system encourages them to do so. And let's face it, examination systems (and in this day and age, even the US of A can't continue to do things in splendid isolation) are de facto adversarial, even if they isn't supposed to be. So... what should we be doing to further encourage people to do their own prior art searches, for example?

Regards, Luke Ueda-Sarson

[Moshe]

AnonExaminer,

I can not believe that you cannot hire enough Examiners with US tech workers having their jobs outsorced to China/India and age discrimination hurting those over 40 - the gov't hacks are too lazy to 'think outside of the box.'

Thus, I propose the following:

(1)
In terms of $$$ for hiring new examiners, I know it's been mentioned before (and is almost cliched) but:
HIRE THEM IN A CITY THAT IS NOT WASHINGTON DC !!!!
In Kansas City or Mobile, AL or Memphis, TN, etc etc the Examiner's salary goes a long way (even after adjusting down - the COL adjustments tend to be smaller than the REAL COL differences) - then you can attract better (and more) people.

(2)
Also, make an effort to RECRUIT OLDER ENGINEERS - it is not a secret that age discrimnation is an issue today ESPECIALLY IN SOFTWARE/COMPUTERS where over 40 is considered (erroneously) 'over the hill.'

Ironically:
a) these are the fields PRECISELY where there is the greatest shortage;
b) older engineers are PRECISELY the type of people who have the years of experience with prior art (as opposed to newbies out of school) that is necessary in the software arts where greater knowledge of non-patent prior art is more important.

Of course this will not happen because government hacks using the USPTO as a stepping stone for someting else want to be in DC where 'the action is' - thus, they put their own career ambitions over the public good. Being in Mobile , AL or Kansas City will put them 'on the periphery' of jockeying for goodies.

[anonEPA]

If you can't pay examiners what they might be able to get outside, aren't there other ways in which they can be rewarded that would make up for this? Make the office a more congenial place to be, make home working easy for those that want to, allow flexibility in schedules/location, part-time working, offer creches, ease up on targets (possible if there are more people to do the work) to allow time to do a proper job and increase job satisfaction, etc. Perhaps these types of things are already provided, but there are many people who are willing to trade a few $$$ for a better work-life balance and a fun workplace.

How do EPO retention rates compare to the USPTO, and -if they are better - what do they do differently?

[AnonExaminer]

Moshe,

It's not only an issue of not having anyone to hire, the issue is being unable to train more examiners and the vast diminishing capacity of the office to run while trying to train the new examiners.

The office has long recruited outside of traditional age ranges. In my starting class of 14, 6 of the new examiners were at least 40 years of age. Of course, of those original 14 only 3 still work at the office, including none of those 6 older workers. Since I roomed with one of the older workers for a while I think I can uniquely state why success wasn't more forthcoming. While he had a greater understanding of the art, he had absolutely no desire to train for 2 years and learn an entirely new field (law) at this point in his life. I imagine the same was also true of the other examiners. Partly due to the complexity of the field (the uniqueness of the law/tech duality) and party due to economic realities of a high demand field, the office has a tremendously high turnover rate in new examiners. Unfortunately this only amplifies the pendency problem with so much examining time is allocated from senior examiners to train these short-term employees.

With regards to hiring outside of the area, this is certainly in the pipeline. The office initially considered satellite offices across the country, but with the advancing technology and ability to telework, those plans have probably been terminated. I imagine in the near future employees will be able to work wherever they have an Internet connection, including anywhere in the US (this is already being piloted by members of the BPAI). But the limitations on training will still exist. There is an ideal ratio of experienced to junior examiners that really can’t be overcome. Unless attrition is drastically reduced, it will be many years before a substantial gain in prosecution ability is really materialized. The office is already mandated by congress to hire 1000 examiners every year over a five-year period. This is already more examiners than can realistically be properly trained and integrated. I can’t really imagine more people being brought on at this time.

Of course, it would be easier to train people for more narrow tasks (just search for instance) and this was an idea that was floated to help hire more people… but it was a non-starter for quality reasons.

So to sum up… several things prevent the office from hiring enough examiners to solve the problem.

I should point out one thing… it’s absolutely possible that at some point the office could catch up and any changes that have taken place in the meantime could be rolled back. But that remains to be seen.
-M

[anoynmousAgent]

AnonExaminer,
You wrote:
"We can also expect a 3-fold increase in fees. Do your clients want to spend 3 times as much? How about small inventors? Is this the end to small inventor?"

"Raising the entry cost pushes out small inventors. The desire is not to have a perfect system, one simply doesn’t exist. "

MY RESPONSE:
First of all, as an agent who represents many small inventors, I am deeply touched by your empathy - it is nice to know that you are limiting my clients' ability to get patent protection for their 'own good.'

More seriously, the extra burden imposed by the rules will require MORE attorney/agent time for more searches, more appeals, more 'defensive driving' when drafting the application, etc etc etc etc.

Today it costs about $500(give or take - I didn't look up the exact number) to file for a small entity plus 100 bucks an independent claim $25 a dependent claim. Drafting the application typically will cost (using round numbers) about, say $4,000 - 5,000.
Thus, USPTO fees are a SMALL PERCENTAGE of the cost to small inventors. The REAL COST for small inventors is agent/attorney time.
The new rules will cause the price of seeking patent protection to INCREASE - in many cases this will be the practitioner protecting himself/herself from possible malpractice situations related to the limited number of RCEs.

It seems that your argument may only be relevant for the pro se applicant - the overwhelming majority of small inventors only stand to lose.

[AnonExaminer]

Luke,

I think limiting the number of examination steps would absolutely force a change in application and claim presentation. Also, I think it's more than pin citing. I think it's claim writing and more precisely focusing examination earlier in the process. This runs counter to the belief that one should maximize scope at all cost, but this would be one of the sacrifices I mentioned above that must be made.

Also, I don't agree that the system can't be changed. The USPTO is the 800-pound gorilla in the room. There is far too much money involved for the players to ignore any changes it makes. I think any substantial changes to the claims would propagate many levels, both to the US courts and beyond.

AnonEPA

I don’t have numbers for those across the pond, but as to your other points the main problem is that the competition is doing the same things. Firms are a little behind the PTO in work-at-home or flexible schedule, but not much. One party on the dark side recently tried to seduce me over with a promise of 50+% work-at-home and complete flexible schedule. Plus all the other extras, business casual, benefits, and several things the government can’t offer (substantial bonuses, lavish parties, potential equity offer, no commitment law school payment, ect…) The more people that come out of the office with this new lifestyle expectation, the more I expect those changes to propagate even further.
-M

[AnonExaminer]

Ok, last one for a while and I'll stop hijacking this thread.

AnonAgent, I was actually talking about Pro Se applicants when I said that. But also inventions on the margin. Further, the cost of examination is spread across the lifespan cost of a patent. We don't really do any more work for those patent continuation fees. So the total cost is really substaintially greater. More like 4k for a 20 year patent small entity. Increasing that number 3 fold would start to make a serious dent.

Also, while I think the upfront cost might be greater to inventors (it would for instance include the cost of a limited search and more time to draft claims) I believe the end result might be cheaper. If my guess is right, and limited bites of the apple force applicants into writing more limited claims at the start, the process should require less actions. A shift towards broader interpretating of DOE and less requirements on literal infringement would also streamline prosecution and perhaps lower applicant cost.

The cost now, including multiple continuations and often multiple patents strung over several years to grab additional subject matter defensively is certainly a high one as well. And attorney fees are high in that instance as well.

I don't think it's really possible to predict how it would all shake out. Too much depends on the courts, applicants, and the final form of the new rules. But I do have some faith in the market. Given the chance, it will adjust.
-M

[anoynmousAgent]

AnonExaminer,
Thank you for your comment.
You wrote:
"Also, while I think the upfront cost might be greater to inventors (it would for instance include the cost of a limited search and more time to draft claims) I believe the end result might be cheaper"

As someone who has worked with many small clients, I tell you (in electronics/sw probably less so in mechanical) that upfront costs is the name of the game. Many times the commerical viability of the invention will only be known later (I assume that this is also true for pharma/biotech). Many times the inventor will need time to raise $$ and the upfront cost (i.e. before investment) are the ones that really hurt the most.

With many inventors, the name of the game is:
a) get a date without sacrificing claim scope;
b) pushing back as many costs as possible.

Thus, a situation where total costs are redced but upfront costs are increased (maybe substantially) wil be VERY BAD for most small inventors.

Thanks,
anoynmousAgent

[anonbiotechatty]

The PTO now offers accelerated examination, why not a deferred examination option? I see many cases where the inventors/companies are in a hurry to get a filing date, but still don’t know what the product is or if there ever will be one. A lot of these cases are the ones that wind up in continued prosecution or as continuations (“sorry, we claimed the wrong thing because we didn’t know at the time that only one of the 25 embodiments would actually pan out”). It seems to me that such an option would at least make a dent in the backlog. In at least some cases, the deferral would wind up being an abandonment – but the PTO would have already collected their fees and the applicant would preserve their filing date for those inventions that they eventually want to go forward with. Applications that are really not ready for examination could be allowed to incubate while additional data or funds are accumulated. Plus, by the time an applicant chooses to go forward with the application, there may already have been some foreign prosecution, which would amount to de facto outsourcing. Seems to me this would be a win-win.

[jphudy]

Wow, the fact that this thread continued all thru the night may say something about the workload in our field!

Anyway, if I remember correctly, the rule does not prevent more than 10 claims, it only prevents the examination of more than 10 claims. i.e., remaining claims are dependent and are allowable because one of their parent 10 claims are allowable. It's somewhat rare to have greater than 10 indep. claims in a case, anyway. With as many dependent claims as you can pay for, I don't think that clients must leave their inventions out on the table with no protection.

The reduction in examination time here could be a great benefit. Can you imagine how long it takes to make a lock-tight prima facie case for 60-80, -100 dependent claims which are each arbitrary (in a novelty sense). I've got about 9 hours to do a 1st action and I have to find a dozen references just for silly (pardon me) dependent claims (i.e. wherein the oscillator is a crystal oscillator, wherein the oscillator is a voltage controlled oscillator, wherein the oscillator is contained in a phase locked loop, delay locked loop, ... etc.) It's not just a matter of finding the reference, either. I have to come up with some semblance of motivation to combine. IMO, give me a break!!

Moshe does have a great point about hiring in a city that is not DC. As far as engineers go, DC already has a dried up labor force and most new hires need to be imported. But, DC is not the most inviting place to live. Many more positions would "stick" if they were outside DC.

AnonExaminer is right on with respect to the fact that hiring soo many new examiners is just not feasible. I've been around for 4 years and, at this point, my SPE can barely breathe - there are so many new hires hounding him.

Besides the fact that, this is just not the line of work that most engineers want to do. When I first took this job, one of the entrants in my group asked my SPE when we were going "down to the lab" to "check it out". Needless to say, she's gone now.

Couple the distaste for the work with a high learning curve and , in some cases, supervisors that "force" their junior examiners to make 101 and 103 rejections which are completely contrary to the body of law just to "put it on the record"; and - examiners drop like flies. They barely have time to make proper rejections let alone legally erroneous ones. IMO, the halflife of new hires is 1 year.

[Moshe]

Anonbiotechatty:

You are right; other countries also have deferred examination (if I am not mistaken, I believe Japan has deferred examination).

The problem is that BSA executives would whine to the business press and would fund lobbyists (i.e. to lobby congress) and would fund law school professors (i.e. to lobby the court system).

Their claim would be that by allowing deferred examination this increases the time period of uncertainty about what products of theirs infringe.

On a personal note, many of my small inventor clients would LOVE deferred examination - they want to POSTPONE expenses - by postponing office actions, they are postponing the need to pay agent/attorney fees for OA responses, postponing the need for RCEs, postponing the need to pay for inevitable appeals, etc etc etc.

Given the climate today and the 'sky is falling' constant drumbeat against patents (i.e. in the NYTimes, businessweek, etc etc), I find it hard to believe that any of the Bushies in the USPTO would prefer small inventors over BSA corporations and their ilk.

Don't look to congress for help either - Lamar Smith and Berman and Orren Hatch and the others are too eager to receive donations from BSA corporations to do anything to help small inventors.

Sorry,

Moshe

[hp]

Yes, deferred examination would be a significant way to reduce the USPTO backlog. And it would save applicant's money.

In my experience, 20% of the international applications we file are abandoned prior to requesting substantive examination. The product changes or for some reason never goes to production.

The extra 3 years between filing and the request for examination deadline provides lots of time for an invention's potential to be more fully appreciated.

Seems win-win. The application would be published, so competitors can see what might be on the horizon, no hidden "gotcha" downside.

Why isn't deferred examination being debated / proposed?

[Darren Gardner]

How much bulk does that pointless little US speciality "Best Mode" add?

"Best mode" is a fundamental requirement in nearly every patent system around the world. It is part of the trade off between the government and the inventor by which the government grants a monopoly to the inventor in return for the secrets to the invention. Without disclosing the Best Mode, the inventor is not keeping their side of the bargain.

[oldfartagent]

I wholeheartedly agree that deferred examination is the only way to truly put a dent in the backlog so that the other issues troubling the PTO can be brought to the forefront. I suspect that my primary clients (large multinational corps.) would leap at the chance to not trouble the office with examination of at least 20-30 percent of the applications that I file. Moreover, they would likely love to defer that decision for five years rather than three and the numbers would go up further. I has been estimated that something less than about 10 percent of patented inventions ever make money, so why on earth examine all of them! The rest of the world doesn't!

While I'm talking, I suggest that any inventors reading this whose attorney or agent says 10 claims is enough to protect any invention should be looking for another attorney or agent.

[Points to Ponder]

Answers to MaxDrei (Apr 13, 2007 at 01:52 AM)

1) How many words does it take, you to get across your inventive concept, to one in your peer group? Not 250 pages of text, I suppose.

For this group of inventions, about 250 pages. I was a very experienced engineer in the field (I lectured on a related topic at M.I.T.), and this is what I thought it took to communicate the inventions to me. There is very little "fat" in my specifications. Take a look at 7,065,633. (Now that I'm in-house, I fire lawyers that give me 1 page of real disclosure and 15 pages of boilerplate.)

2) Isn't the intended reader of a US patent the PHOSITA?

That's the legal fiction. And if you believe the fiction, you're deluding yourself, and not representing the client. The audience for a patent is a federal judge, who studied history or political science, not engineering. He has about 1/2 - 1 day assistance from the two sides' experts - about the equivalent of a week of college studies.

3)Aren't the courts everywhere else in the world looking at a patent in suit with the knowledge of the PHOSITA?

You are corect, that the person that makes the decison about the money is a court. A court with a history or political science degree. Very very few courts have the knowledge of the PHOSITA.

4) How much bulk does that pointless little US speciality "Best Mode" add?

In almost all cases, "best mode" requires only a few sentences. When you have related, intertwined inventions, then "best mode" simply means you have to keep the specifications together, not that you have to add anything.

How much does "best mode" cut out of the costs of litigation? Much more, because if the spec fully discloses the invention, including best mode, there's much less vagueness. Have you ever tried to litigate a patent that was originally written by a Japanese lawyer?

5) How much of the claim bulk is irreducible minimum, and how much only because today's US patent system is an arcane game, incomprehensible to the intelligent layman, played out as described by Charles Dickens in London 150 years ago.

What does this quesiton even mean, when the premise is a counter-factual? Claims of U.S. patents are interpreted by U.S. courts under U.S. law as it is, not as Dickens might have wished it to be. My claims are an "irreducable minimum" to meet the economic goals of my clients under those requirements.

6) How many claims are in your apps outside USA

I file my PCT's with about the same number of claims. The PCT rules provide that if I get them examined by the PCT, no national office can later divide.

7) What evidence do you have, that the abbreviated foreign claims set is inadequate or ineffective?

I am not licensed to opine under foreign law, and the question isn't relevant to this thread. We're discussing purely U.S. practice under U.S. law.

8) Do you want the US patent system to be reformed?

Can you elaborate the question?

Of course I want the U.S. Patent Office to be reformed.

I never want to hear again from an examiner, "I don't have to read the MPEP. I've been here x years, no one has ever informed me of this point before, and I don't have to do it now." I hear that, almost word for word, in over 20% of my interviews.

I don't want another experience where a T.C. Director tells me on the phone and in writing that he makes up the rules as he goes, that he won't read the Director's published instructions to find out what his duties are, and "it cannot be seen" why the Federal Circuit's decisions on procedural law have any bearing.

Instead of enforcing the rules, the Patent Office affirmatively rewards examiners who short cut to disposal by simply ignoring the rules. T.C. Directors recognize that enforcing the rules would cut their production numbers and compensation - so they don't.

Reform the Office's general disrespect for the rule of law, put incentives in place for examiners to follow the Office's "compact prosecution" rules, and the Office's backlog will disappear very quickly.

If someone high up in the Office emails me, I'll call you back to give you the names of examiners and the T.C. Director who need to be sent to "re-education camp," and who are not there to help you carry out your oath to "see that the laws are faithfully exectued."

[Foreign_dude]

(1) Does the alleged news of the proposed continuation rules being dropped off at the OMB for approval means their implementation is imminent?

(2) Also, can someone please explain what is the procedure for implementing new rules at the USPTO under US law? (does it have to be passed by the US Congress?)What is the process for challenging the propsed continuation practice?

[johng]

You are my hero Points to Ponder. I will gladly fight side-by-side with you in battle any day.

[jphudy]

Just out of curiosity... If Joe Inventor really wants deferred examination, why do I always get at response to my 1st office action? Most FOAM's don't come until 3-4 years after filing. Yet, I've never seen one that was abandoned without at least responding to the 1st action. Do you really think that waiting another 1 or so will make the difference?

I'm not against the idea - it actually sounds pretty good. But, will it really work?

[Zeke]

To everyone complaining about the quality of examination and under-trained or irrational examiners:

Know the invention, know the most relevant art, don't write claims so broad that they read on said art, and examination becomes a formality.

After all, who is prosecuting the application, the examiner or the attorney?

[SF]

One could save himself or herself lots of time by just reading Points to Ponder's comments. They're really good.

As for the suggestion of other posters that the USPTO cannot hire itself out of the backlog problem, that's correct. But they can hire *and* retain themselves out of much of the problem.

To do that, the USPTO would have to shift their paradigm from being a government agency to being a private entity that must compete with other private entities (that is, the law firms that would pay more money for agents than the patent office does for examiners). First, double or triple the filing, examination and/or search fees and allocate all that money to increased pay for the examiners. Second, create satellite offices in cities where this increased pay will create "golden handcuffs" that keeps examiners from leaving. As a side benefit, the double or triple fees will deter knee-jerk filing of initial applications and continuing applications.

Other steps could be taken as well as part of a compromise. The USPTO could (1) require applicants to perform patentability searches; (2) require applicants to provide an analysis of the references after the first continuation; and (3) provide for deferred examination, with some sort of protection against prosecution laches, to allow applicants to have the benefit of keeping a continuation pending without burdening the office with repetitive claims.

[Points to Ponder]

"Know the invention, know the most relevant art, don't write claims so broad that they read on said art, and examination becomes a formality."

True in theory, false in practice. In over 30% of the Actions I get, the examiner is dead silent on at least one limitation of each independent claim. In at least 80% of all "rejections" I get, the examiner is dead silent on at least one legal element that the MPEP says "must" be considered, or the Action states a proposition of law that exists nowhere in any written document (except, often, a case or MPEP section that says expressly that the examiner's proposition is NOT the law). I'm not counting the cases where the Action says something silly, or applies the law in a way I disagree with. I'm only counting Actions that are dead silent on a legal element or claim limitation that's there in black and white, big as a barn, or engages in pure legal fictionalization.

This week I responded to an Action in which the examiner gave the brush-off to 12 claims with ONE cite, to a 5 column chunk of a reference (no pin cite to anything). No element-by-element comparison to any individual limitation. No consideration whatsoever of the 11 dependent claims, just a pro forma statement that they were rejected. In a phone interview (I had given the examiner an express heads up to the issue I wanted to discuss), I asked "So what's your view on these last 7 words of the claim?" Long silence in reply. He had simply ignored the claim words, both in the original Action, and in preparing the interview.

The reason the PTO does so much "rework" is because so much of its initial work is so incomplete. The solution to the PTO's backlog and rework problem today is the same as the solution Ford, GM and Chrysler had to learn 20 years ago - if you do a lousy job the first time, it's awfully expensive to fix it down the line. Your expenses arising from your defects are not your customers' fault.

The current "compact prosecution" rules, at least examination of claims and continuations, are pretty close to right. The PTO's problem arises largely from their refusal to follow or enforce their half of them. The PTO has an institutional policy of anarchy, where the agency heads state in formal papers that examiners have "freedom to independently decide" what rules they'll follow, which they'll ignore, and which they'll make up, and reward them for breaking them.

[Steve]

Just to be clear, I never said I was leaving 10% of our inventions on the table for others.

I was saying that we have a 90% chance of capturing our competition on a reasonable number of bulletproof claims.

[ahha]

jphudy you wrote:

"Stick to the fact that there can't be more examiners; then, give some of your own ideas to fix the backlog problem."

Here you go:
1) Have the examiner call the applicant/attorney BEFORE the OA and find out what the invention is really about. (Reduces keyword pro forma rejections.)

2) Send out email/smail notices to the "backlog" and ask for voluntary abandonment. Many of my .coms are dead and I know their applications are going dead and there is no need for an exam.

[hp]

Open and frank discussion with the Examiner is almost always a positive event that quickly moves the prosecution forward.

We always request a telephone conversation with the Examiner as standard practice.

Unfortunately... it is the rare exception when the Examiner assigned to any of our applications is able to speak English well enough to engage in a meaningful conversation.

[Points to Ponder]

AnonExaminer writes "You can’t hire more than 15% of your workforce per year," ...

I agree there's an upper bound, but 15% is too low. For example the most successful law firms in New York have new-hire rates of 20-25% per year.

AnonExaminer writes "DOE [Doctrine of Equivalents] protects those same inventions when appropriately applied."

You've put your finger on one key issue. You're absolutely correct, that examination/prosecution could be much simplified if the law didn't require me to provide literal coverage of every atom of the invention, if I could rely on doctrine of equivalents.

However, under current law, another principle is thought to be more important: competitors must have certainty, so that they know what they can do to design around a patent. From my practice representing defendants in litigation and representing those trying to avoid infringing, I have to agree with the latter view - in the early 1990's, much more economic harm was being done by a broader, vaguer doctrine of equivalents, than is imposed in prosecution costs now. Current law is probably the better balance.

Patent applications are getting more complicated for two reasons: (a) inventions are getting more complicated, and (b) the legal obligations of a patent are getting more complicated. These two facts create costs, but not fault. This is what the law is, and what the law should be. We all have to acknowledge this inconvenient truth and plan for it.

----

Where I part company with PTO management is whether the PTO should adopt a solution that reduces *global* patent costs (my view), or whether it should adopt a solution that saves the PTO some money while raising business costs by 4X-10X as much, when the PTO has done nothing to analyze where its costs are coming from (I personally asked John Doll if any such analysis had been done, and he said "No."). Last summer's estimates by the PTO were for savings of about $150 million per year. The costs estimated in the Notices of Proposed Rulemaking are about $900 million per year (2.7 and 2.8 million hours each for each of the three proposals, at average rate of about $300/hour.) That's just for the paperwork costs - the PTO didn't even try to estimate the destruction of business value or additional litigation costs created by the rules.

[tuolome]

"Points" hits it pretty square on the head. The quality of of office actions I've seen over the last few years is, with a few exceptions, pretty dismal, and getting even more disturbing over the last six months or so. I don't know if it's fundamental breakdown in training or supervision (turnover?) or a blowback from some political agenda within the PTO. The latest kick seems to be automatic Section 101 rejections that are just pure nonsense. I also see churning successions of non-final actions. I'm beginning to refer to my docket as the "Quagmire" or "Iraq Docket." You can get in, but I'll be damned if you can get out.

All that said, however, I really wonder if there is that much that can be done to improve PTO quality that will be cost effective. Sure, you could have experienced patent prosecutors examine each application, spend days conducting prior art searches and analyzing each claim meticulously, but would it be worth it for the run-of-the mill case? I think we may just be asking too much of what may be a model that has been rendered antiquated by the pace of technology and the volumes of applications. Generally, it's going to take more than tweaks to the PTO, maybe structural changes to the patent system, stuff like presumption of validity. I shudder when I think that the fate of a multimillion dollar invention rests on an overworked, underesourced and undertrained examiner. I equally shudder when I think of the risks to a client arising from a patent allowed by the same examiner.

[DS]

Wow, interesting thread here. I'm one of those SPE's noted above who apparently isn't properly trained and/or is signing cases with my blindfold on, so maybe I have nos tanding here, but what the heck.

As was mentioned before, and pretty much agreed to by most, hiring our way out of the backlog isn't the perfect solution, if it is one. It may pay off down the road (5-10 years), but right now, it is just taxing us to the limit. I have 7 new examiners coming into my unit this year from the training academy. This puts a strain on my primaries to provide help in the art areas, and on me to provide proper training in everything else. Unbelievably, I still train my examiners in the poper way to do things.

Personally, I am very customer oriented, and try and get my examiners to bend over backwards to help out whenever they can.

When they announced the new rules package last year, I made it a point to let the examiners know that this will put a premium on finding the best art and doing the best job the first time (I know this sounds like a "duh" statement, but you all know the drill). I push my examiners to find the art closest to the actual invention rather than just covering the claims so that any amendments overcoming the rejection(s) would necessarily place the case into condition for allowance. This is the criteria for outstanding in their PAPs, and I hold them to it.

Do we make mistakes? You bet. But to think that we jsut don't give a damn and send out any old crap to get the counts is paiting with a mighty broad brush. I am proud of most of my examiners' work, and the ones that don't get the job done are held accountable.

As to hiring and pay, you all do know that the examiners make a very nice entry salary, including subastantial bonuses for EE's and Comp Eng's? Sure, they may be able to make more in the private sector, but I think the increased workloads and hours they would have to work would make that pay increase seem awfully small. Plus, the outstanding flexibility of the work schedule, the chance to work from home (increasing amounts of examiners work from home every year) and the ability to earn bonuses and raises with regularity should be very enticing.

Sorry for the incoherent rambling. Alot of posts above and my thoughts should have been more cohesive when responding. Will take notes next time. :)

[Lazerus L.]

As an intro, I've been at the PTO for over 20 years. I think I regualrly do a good job. Attorneys have told me this, my ratings back it up, I've never had a QR kickback or one of my cases go to re-exam because of litigation (not ecen aware of any that have been overturned in litigation) I'll get to my comments below.

Firstly, go back and read the post by AnonExaminer from Apr 13, 2007 at 02:36 AM. It very clearly lays out the issues the the PTO faces.

Now, instead of the stuff you lawyers have been posting here, how about realizing that while the office has serious problems, YOU ALL are ALSO part of the problem. Too often, we see cases where (even after 3 years) no one has ever reviewed the claims on the applicant side to correct even simple things like bad translations or misspellings. And then there are the claims that read on prior art that is 30-40 years old (in the elcertical arts!). Don't the rules/laws state the claims should begin with the "broadest that the applicant thinks that they are entitled to"? Do you really think that you are entitled to something that reads on art older than you are?

A 2nd issue is the disappearance of rule 56. We often (usually?) see cases where the applicant has realted patents or articels that are only brought to the attention of the examiner after allwoance (if then). Applicant/lawyers do EVERYTHING that they can (ethical or not in my opinion) to hide their invention and what the relevant prior art is. Most do not seem really interested in getting a "valid" patent but are more interested in getting the broadest claims that they can get by the examiner. It has to be a TWO-WAY street. Try claiming something that is at least CLOSE to what your inventyion is.

With that venting out of the way, I, and most of the people that I work with in my part of teh PTO really do try to do as good as we can in the very limited time & limited resources we have. Are we all perfect? No? Are any of you? No, but you all write like you are. It makes me, and many other good examiners, to want to say "F$%@ it". If we are going to be continually told we are doing a bad job by people who really have totally different goals and resources (you lawyers), why should we try to do a good job? We get little help from lawyers in establishing a good file history and a valid patent. Mostly, amendments are are more cosmetic or just barely enough to overcome the applied rejection without looking at the other refereces I cite which show what you added.

OK, maybe I wasn't done venting :) As to some of the issues raised in other posts:
1) having examienrs in other parts of the county - Law offices still pay a lot more so 20-50K extra in DC or Omaha is still 20-50K extra. Moving places does not change that.

2) Putting people with 15-20 years experience in the PTO in charge - John Doll & Peggy F. (as well as others) have come up through the ranks from examiners. We already have this. And, I think that they are trying to do the best possible with a toght situation.

3) Give examiners more time for cases cases with more claims (or more time in general) - Tht would help some in quality. However, are you willing to wait even longer to get your application examined. More time/case means longer until the next case is reviewed.

4) SPEs not reviewing cases properly - With an average SPE having maybe 8-12 newer examiners (at least in the electrical areas), each maybe doing 8-12+ cases each PP (2 weeks), if each case was only given ONE hour of careful review (checking the references, checking citations, checking each limitation of maybe 50-100 claims,each with 3-5-10+ limitaitons) we would already total OVER 80 for 2 weeks. Plus all of the other duties of the SPE, 1-on-1 training with the examiners, meetings, interview, etc. does not leave much time for sleep & food. Again, what sounds good in a vaccume is not always practical in real life.

5) Only examining 10 claims & making more than 1 continuation more difficult is not fair to applicant (various reasons) - maybe a little, but not as bad as being made out here. Limiting the # of continuations will help to focus the claims & (hopefully) get to the real point of novelty being claimed sooner. Limiting the # of claims reviewed will help quality as fewer claims to examine means examiners can more carefully review those 10 claims & not really have to worry about the other 100 claims.

6) Some examiners can not speak English well enough to have an interview - Firstly, this is biggoted & disrespectful. Do all examiners have English as their 1st language? No? Do all lawyers? No? It goes both ways. Please keep that in mind. 'Nuff said on that.

7) DOE issues - Yes this is a concern of yours (applicants/lawyers). Examiners do not care as it does not directly impact how we examiner claims. If you do not want to have to amend your claims because of DOE limitaiton fears, write your initial claims better. Too often, if looks like little thought has gone into some of the claims we see.

8) Examiners don't know the law - True, most examiners do not have law degrees. However, most lawyers do not understand the technology. I have, all too often, had interviews where the lawyer could not explain the invention or what claimed eleemtns correspond to what elements in the figures because they did not understand their own invention. If the lwayer does not understand the invention, how can they properly determine what should or should not be claimed? Maybe to prosecute before the PTO, agents/laywers should also have a degree in the art they are working to make them at least POSITA? :) Maybe only another 4-12 years of schooling, depending on the art.

9) MY SOLUTIONS? Just a few ideas, not complete:
a) rule changes like proposed;
b) applicant being required to cite their own related prior art;
c) mandate preliminary amendments to "clean up" cases that have foreign priority;
d) More cooperation from lawyers/applicants to make clear what their invention is and how it distinguishes from the prior art;
e) help from the courts in punishing "patent trolls" and guidelines in what is sufficint to make rejections and other similar issues.

Longer than I planned, but some things needed to be said. Bottom-line, it is a 2 way street & the lawyers (and applicants) are part of teh problem & need to help in the colutions. Thanks.

LL

[Lazarus L.]

A quick question for all of you lawyers:

If you get an allowance where you "know" the claims claims are not allowable do you ever complain to the office or file a response saying that the claims are too broad and should not have been allowed? (I know that you only recieve bad rejections and not bad allowances, :) but just suppose). I would like serious responses as this is not a rhetorical question.

Thanks,
LL

[Ivan Examinerovich]

If anyone thinks there is no pendency problem related to RCEs, that is not the case. I have been at the office around two years. In the last six months (since the beginning of the fiscal year) most of my counts have come from a handful of allowances, a bunch of abandonments, a slew of PCTs (Ch. 1 & 2), and a slew of express abandonments on RCEs, and the same number of first actions on RCEs. During this time I was promoted (9 to 11) with higher production. In my art area, RCEs are pretty much automatic. 2nds or 3rds are pretty common. I have done maybe five or six "new" cases since the beginning of the fiscal year, and I am still well over 100% (slightly less than 110). Something HAS to be done about pendency. If the rules package is shot down by some applicant suing the office, I may call my congressman and ask for it to to be enacted into statute.
Frustrated Examiner

[Points to Ponder]

AnonExamienr and Lazaurs L - you may well be exceptions. All I can speak to is a statistical aggregate.

In T.C.'s 3600 and 2100, examiners' perceptions, if they track yours, are false. The reason examiners' perceptions are false is because examiners don't look closely at the facts or the law. At least in my applications, and the applications of the lawyers I supervise, the facts that establish patentability are there from day 1, but most examiners are too sloppy to notice them.

The examiner's perception that the claims do not is based on three repeated errors -

1. Limitiations in the claims that are there in black and white from day 1 are simply ignored by the examiner. You can see the error on the face of the Office Action - the examiner moves through the claim and matches up the reference to this language, then this, then this ... and then skips over a claim phrase. Dead silence. You can see the "click" on paper just like you can hear the "click" of a skip in an LP record. The omission is plain and unmistakeable on its face. A 5-second review by ANYONE would instantly reveal the omission.

2. A failure to "designate portions relied on" and "clearly explain the pertinence" as required by 37 C.F.R. § 1.104(c)(2). Maybe 10% compliance by examiners. Ten years ago, most Actions did both. Now, 95% of Actions only "designate," never "explain." The consequence is erroneous examiner perception. If a claim recites an "x" three times with three different properties, often an Action will match up "x" to three different incompatible things in the reference. If Actions consistently followed both requirements of Rule 104, e.g., by giving the name of the corresponding thing from the reference, the examienr would have noticed the mismatch. Instead of pages and pages of bogus analysis, there'd be a very simple Notice of Allowance. Because so few examiners follow the procedural rules these days, hours and hours of examienr time are wasted on bogus Actions. The examiner thinks - erroneously - that the claim didn't recite patentable subject matter. Wrong. It's the examiner's error of sloppy analysis, not the applicant's.

3. Refusal to follow the law - or rather, a misguided belief that thier memory of what they learned years ago is so infallible that they need not open that big heavy MPEP to confirm that their memory is right and still current. Here are the errors I get over and over again:

a. In 30-50% of Actions from 3600, claim limitations are ignored for §§ 102/103 purposes because "descriptive matter." There is no such law. "Printed matter" can be disregarded in some circumstances, as set forth in MPEP § 2106, but "descriptive matter" can never be disregarded for §§ 102/103 purposes. "Non-functional descriptive matter" is only a § 101 issue. The examiner's perception that the claim doesn't recite patentable subject matter is examiner error, not applicant drafting error.

b. "Functional language." The doctrine against "functional language" was removed by the 1952 Act. Why does this still show up in 5-10% of Office Actions? This is examiner error, not a failure of the applicant to claim patentable subject matter.

c. No showing of "reasonable expectation of success" for obviousness. This is omitted from 98% of the § 103 discussions I get (I can remember seeing it only once in the 11 years it's been required). Because the examiner never thought about "reasonable expectation of success," the modification the examiner proposes is simply ridiculous. The procedural rule of MPEP § 2143.02 is there for a reason - to force an examiner to think about the way the thing really works, and to keep keep examiners from writing silly rejections. When an examiner doesn't follow the procedure, the result is - silly - and the examiner's error, not applicant's.

d. Perhaps 10% of § 103 "rejections" follow the following form: "No reference teaches claim limitation 'x.' However, it would have been obvious to create an 'x' out of thin air because ..." There's no such thing. Never. You have to show *every* element existed somewhere in the art, before you show "motivation to combine" that element. Examiners cannot create something from nothing. Ever.

e. I haven't gotten a single § 101 rejection in the last eighteen months that even pretends to follow the Interim Guidelines. Office Actions NEVER identify particular claim language thought to be "abstract," even when the claim language tracks Lundgren or State Street almost word for word. 0% compliance rate. After making that error, 90% of § 101 Actions ignore claim language like "performed on a computer" or "computer programs stored on a tangible medium."

f. At least 30% of second-and-subsequent actions fail to "Answer All Material Traversed," or fail to provide Rule 104(d)(2) affidavit or reference when "called for" by the applicant, or otherwise just ignore "inconvenient" arguments in applicants' papers. This is examiner sloppiness and defiance of MPEP requirements, not applicant error. Just today I reviewed a paper prepared by our outside counsel in response to an Advisory Action, signed by an SPE in 3600, that states that he WILL NOT respond to the new arguments presented in our Rule 116 paper. That's illegal. It makes an appeal very inefficient if we don's know what the examiner's position is on the issues. But if the Office insists on playing hide the ball until we appeal, well, we'll appeal.

I hear over and over from examiners in interviews "I'm a big picture guy. I don't worry about details." That's horse manure. Claim limitations and MPEP-required analytical steps are not "details" that you can slide over. Overwhelmingly, at least in the applications I see in 2100 and 3600, examiner perceptions that almost no applications recite patentable subject matter reflect examiner sloppiness, not a failure of applications.

The Supreme Court has often explained "Procedure is the means; full, equal and exact enforcement of substantive law is the end." Examiners, SPE's, T.C. Directors, and the Petitions Office disagree with the Supreme Court - they tell me over and over in interviews and formal decisions that "Oh, that's just procedure. I don't worry about that." We all went to engineering school - how often could you get the right answer if you skipped over steps in the analysis? Same thing applies now. The MPEP sets out step-by-step rules. If you don't do the thinking required by the procedural rules, then your perception of whether claims are patentable or not is almost certainly wrong.

Procedural law is just as much "law" as any other. I'm continually shocked at the PTO's uniform position, in informal telephone interviews and formal decisions on petition, that the MPEP, and the Supreme Court's and Director's own published procedural decisons can all go screw off.

Again, AnonExamienr and Lazarus L, you may well be exceptions. I have no way to know. But overwhelmingly, the reason your peers are drowning in rework is because their first, and often second, third, fourth, fifth, and sixth, Actions were so procedurally sloppy. The 20% affirmance rate on appeal (when you combine Pre-Appeal, Appeal Conf, and final Board reversals) and examiners', SPE's, and Asst Comm'r for Patent Examination Policy's own statements that they ignore "details" and "just procedure" give independent confirmation to my perceptions of where the fault lies, not yours.

(I haven't done any mailbox prosecution for foreign clients for years. Back when I did do this kind of work, I remember being singularly unimpressed with the instructions I received from my French and Japanese instructing counsel. This may well be the mirror image situation - since foreign instructing counsel isn't actually writing the Reply, they may well be making the same error as the typical examiner, not thoroughly thinking through a position, because they are not writing their analysis down. But I haven't done this kind of work since I was very junior - hard to know at years' distance.)

The solution to the PTO's rework problems is already on the books: start to follow the existing procedural rules that require complete thought, set out on paper. Do that, and the backlog will disappear. If the examiner is right, it's easy to see if it's explained. A claim amendment happens. If the examienr is wrong, once the error is set to paper, it's easy to diagnose the error, and file a corrective Affidavit or direct the examienr to the appropriate section of the MPEP.

If the PTO adopts the proposed rules, and continues its practice of refusing to follow or enforce rules that put responsibilities on examiners, the backlog will get worse. When the examiner is silent in a first action, or fails to answer all material traversed in subsequent actions, or insists that his memory is more reliable than the MPEP on what the law is, nothing can make progress.

P.S. Lazarus L, in the one case where I got an "allowance where I know the claims aren't allowable" I withdrew the case from issue to address a reference that popped up at the last minute. Other than that, it hasn't happened. Everyone I know of (and again, I don't do foreign mailbox work, and I can't speak for anyone other than the 20 or so attorneys I work with and supervise) values the vailidity of their patents enough to pay enough attention to their claims and references that this doesn't happen.

[Points to Ponder]

Revision of one paragraph from above -

1. Limitiations in the claims that are there in black and white from day 1 are simply ignored by the examiner. You can see the error on the face of the Office Action - the examiner moves through the claim and matches up the reference to this language, then this, then this ... and then skips over a claim phrase. Dead silence. You can see the "click" on paper just like you can hear the "click" of a skip in an LP record. The omission is plain and unmistakeable on its face. This happens in well over a third of all Actions I receive, perhaps about half. It's almost the rule rather than the exception. If examiners of my applications share your perception that originally-filed claims are overbroad, it's consistently the examiner's oversight, not mine.

[johng]

SPE DS and Examiner Lazarus, thank you for your input.

I would like to point out that most "older" primary examiners I have dealt with give me a fair shake, and apply the most pertinent art up front. Experience goes a long way. It allows for meaningful amendments and quick disposals (i.e., less "whack a mole"). I also personally know a few SPEs who are dedicated and knowledgeable individuals, but from my experiences, SPEs seem to spend too much of their time in meetings unrelated to review of actions.

Here is my view from the outside:

I too was a primary examiner. I left seven years ago because I could no longer see myself making the PTO a lifelong career. While nothing new, I could no longer stomach seeing good work go unnoticed and knuckleheads get promoted over professionals. It beats a man down and drives some batty.

At the PTO, examiners exist in their own micro-worlds. These mini-worlds shrink even smaller as they are promoted. I understand your defensiveness at some of these posts. It hurts a good performer hearing some of the things being said here. It reminds me of how I felt when Lehman said to the corps, "Get off your high horse!"

However, prosecutors see a much larger sample of work than any one examiner. After leaving the PTO, I was shocked by actions sent my way. My first thought was, man, why was I was working so hard. After seven years, I can now confidently say that well over 50% of the actions I receive have legally deficient rejections. Also, most fail to adequately address arguments by cherry picking, ignoring or misunderstanding them.

I've been advising colleagues and our clients to appeal soon and more often. I have come to realize appeal is less costly and time consuming than feeding junior examiners RCE counts they do not deserve (an entitlement juniors have come to expect). Nine times out of ten, prosecution is reopened, but examiners usually make a better effort in a next issued action, and supplemental appeal is straightforward.

As far as solutions to these problems, I would like to see examiners trained by those running the new reexamination unit. I've seen very good work from those units. Maybe juniors can spend a week or two having their work reviewed by reexam examiners.

I offer these general solutions:

1) Strictly enforce a low actions per disposal average. No awards or bonuses if this is not achieved.

2) More efforts to bring the most relevant art forward in the first action. In other words, enforce Rule 1.104(b). SPEs can enforce this by random reviews of RCE laden cases. Obviously, an old dead-on patent first cited in a fifth office action is a clue this examiner was deficient. Imagine the cost savings for applicants, and backlog reductions possible, if the most relevant art is cited in the first action!

3) Hire about 1000 APJ's to handle the onslaught of cases coming their way.

[johng]

I'm sorry, that should be Rule 1.104(c)(2) instead of 1.104(b).

[Schmuck]

You attorneys are running a really big risk for your clients by threatening to appeal at the drop of a hat. Some, though I do not believe most, examiners will simply allow a case if they are overturned on appeal, rather than apply new art even if it reads on the claims. One time my SPE told me that a primary just allowed a case after being overturned--the SPE was not pleased that more consideration was given. I personally would rather reopen prosecution if the art was good enough, even if I had to "eat" the office action. If a case were allowed without overcoming ALL of the art, it would put them at risk. In my art area, most attorneys make ABSOLUTELY NO effort to distinguish their claims above the art when the claims are first written. You fellas might no patent law better than I do, but I have YEARS experience working with equipment in the real world and I know the art much better than most of you (except for maybe about 10% of you). The examiner might be doing you a favor by making that rejection. Don't wait until after the first or second RCE to claim what the invention is really about, wasting your and my time, and your clients' money.

[johng]

For God's sake Schmuck! I'm not sure whether your comments are serious, or you are just pulling our legs, but you don't have to be a lawyer to gain a basic understanding of the law that YOU apply every day. At least try reading MPEP Chapter 2143. It is, after all, YOUR manual.