Court Blocks PTO Rules on Eve of Effective Date; All Four Equitable Relief Factors Suggest Injunction

Tafas v. Dudas (E.D. Va. October 31, 2007)

After a two-year long notice, comment, and review process, the US Patent & Trademark Office (PTO) published a set of final rules in August 2007 to effectively limit the number of claims filed in each patent application and to limit the number of continuation applications stemming from an original patent application.  (Current rules allow unlimited claims and unlimited continuations).  Tafas, an individual inventor, immediately filed suit — asking the Virginia based Federal Court to block the rules. Later, Glaxo Smithkline (GSK) filed a preliminary injunction to stop the rules before their November 1, 2007 effective date. Other parties, including the AIPLA, Élan, Hexas, the Roskamp Institute,and Tikvah Therapeutics, IBM, SanDisk, & Senator Schumer, then filed briefs or declarations supporting preliminary relief.

In granting the requested preliminary injunction, the district court walked through the four relevant factors: (1) likelihood that the plaintiff will succeed on the merits of the case; (2) irreparable harm without an injunction; (3) a balance of hardships weighing in favor of an injunction; and (4) the public interest supporting an injunction.  Although the four factors are considered as a whole, the first to factors are clearly the most important and must always be proven.

Likelihood of Success: In its brief analysis of the issues, the court found a “genuine possibility” that the PTO will lose. In particular, the Court noted two particular GSK arguments as likely winners: (1) the facial illegality of limiting the number of continuation applications under 35 USC 120; and (2) problems created by the retroactive effect on settled rights. A third argument – vagueness of the ESD requirements – also has some value according to the Court.

Continuation Applications: 35 USC 120 can be read various ways, but the Court found that Federal Circuit law “suggests that a decision by the PTO to limit the number of continuing applications would run contrary to the mandate of Section 120.”  See Symbol. This conclusion is made easier because the PTO would deserve no rulemaking deference for any rules that extends into substantive grounds. GSK’s position on the illegality of claim limitations is not as strong because there is no statutory provision to the contrary. Thus, the court found that “neither party can claim a strong likelihood of success on this issue.”

Retroactive Effect: The doctrine of retroactive effect is interesting here. Unless expressly granted by Congress, an agency’s rulemaking cannot be retroactive. The court found vested rights in the ability to file continuations and claims under the old rules. Those rights vested at the time when the patentee chose to file for patent protection and give up trade secret protection.

While “an individual [that] discloses his trade secret to others who are under no obligation to protect the confidentiality of the information, or otherwise publicly discloses the secret,” loses that property right, Rucklehaus, 467 U.S. 1002, the Final Rules retroactively alter the bargain on which inventors like GSK rely in making their decision to surrender their rights. The Final Rules thus impair GSK’s right to this bargain.

ESD Requirements: The after publishing the final rules, the PTO published a series of clarification papers and guidelines for how to properly prepare an examination support document (ESD) under the new rules. The Court turned that guidance on its head — suggesting an admission of vagueness and noting that the additional guidance cannot be used to help vague rules overcome due process violations.

An alternative way to block the rules is to show that they are “arbitrary and capricious.” The Court found the PTO’s reasoning coherent enough to give the agency a pass.

Thus, the PTO’s rationale appears to be sufficient to satisfy arbitrary and capricious review, and the Court will find that GSK has not shown a real likelihood of success on this issue.

Irreparable Harm: The Court agreed that the “uncertainty” created by the new regulations was sufficient to cause irreparable harm because they would change investment and patent filing incentives. Without an injunction, GSK would be unable to recover from its lost protection if the rules are ultimately determined to be invalid.

Balance of Hardships: For the preliminary injunction, the balance of hardships weigh in GSK’s favor because GSK’s woes are instant once the new rules are effective. On the other hand, the PTO will simply experience a gradual continued increase in pendency.

Public Interest: The public interest is in a stable patent system. Thus, a preliminary injunction to preserve the status quo is appropriate.

Notes:

• PI Order (describing the scope of injunction);
• Discussion of Hearing
• Documents filed for the PI Hearing
• Emergency Motions at the CAFC

Comments

[bierbelly]

"Applicants shouldn't advance obviously losing arguments at non-final and then bemoan not being able to get their amendments in after a final rejection."

I find that more often than not, my "obviously losing arguments" made after the FAOM aren't so obviously losing to me. Most often, they are made (without amendment) because the examiner hasn't made the effort to read the specification and fully consider the limitations of the claims, or has improperly interpreted the prior art to mean something it doesn't say. Inherency is a perfect example: just because you SAY it's inherent, doesn't mean that it is. We offer evidence that it isn't inherent...and you ignore it "Applicants arguments deemed unpersuasive...", without further comment. Thanx loads.

[jexa]

I'm not sure what the issue over finals is. Final rejections where new grounds of rejection have been entered are proper where all new grounds are necessitated by Applicant's amendment.

If this were not so, prosecution on the merits would never close. Applicants could easily file an initial claim, then after each rejection file an additional claim that required additional art. Aside from prolonging prosecution, such a practice would crush the examining corps. As everyone should know by now, examiners get no credit whatsoever for any work done between first action and disposal.

The current system punishes Applicant for not claiming everything up front. In theory, the examiner only considers an application on the merits twice - once at initial filing, and once following amendment (and potentially after-final amendments). Therefore, in order for claims to get full consideration, they must be filed up-front. Additional claims and limitations after non-final will draw (proper) final rejections if they are not immediately found to be allowable.

[jexa]

I find that often, when an attorney starts to talk about what's stated in the specification, they are forgetting that the specification is never read into the claims. Examination is not a validity/infringement proceeding, and the claims are not contrued in the same fashion. Whereas the courts generally construe the claims within the scope of the specification, the Office interprets the claims according to the plain meaning of the language as would be understood by a PHOSITA. Therefore, aside from explicit definition of terms, the specifiction often has little bearing on an examiner's interpretation of the claims.

For instance, if your specification is directed to a method for manufacturing a semiconductor device, but nothing in your claim language explicitly requires a semiconductor device, the claim will not be interpreted to require a semiconductor device (which is how you get semiconductor claims rejected as being unpatentable over legos). Something else I see a lot is "in accordance with". Lacking further language in the claim elaborating on exactly what "in accordance" means, this term can mean pretty much anything. X is "in accordance" with Y if X is affected in any way by Y.

The bottom line: if the language is broad, we interpret broad.

[JohnDarling]

"Therefore, aside from explicit definition of terms, the specifiction often has little bearing on an examiner's interpretation of the claims."

MPEP 2111, "PTO applies to verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant's specification." That "taking into account" thingy is not supposed to be optional.

Or MPEP 2111.01 III, "The ordinary and customary meaning of a term may be evidenced by a variety of sources, including 'the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.'" (discussing Phillips v. AWH Corp.)

But I do agree with you in a way. It's hard for the specification to have any bearing on the examiner's interpretation of the claim if the examiner hasn't read the specification. :-)

[jexa]

On the first point: "Taking account ***whatever enlightenment by way of definitions*** or otherwise that may be afforded by the written description contained in applicant's specification" (emphasis added).

On the second: I have stated above that the "ordinary" and "plain" meaning of the terms is in accordance with what would be understood by a PHOSITA.

What I have stated above is not inconsistent with the MPEP. If your invention is directed to a semiconductor device, and you fail to actually claim a semiconductor device, nowhere does the MPEP explicitly require that examiners read a semiconductor device into your claims for you. Similarly, "in accordance" doesn't mean, "in accordance, as stated in the specification". Claims are read ***in light of*** of the specification, but the specifiction ***is not read into the claims***.

There is a board case that is sometimes mentioned in training lectures, where the BPAI said that the claims were so broad they read on the piece of paper that the decision was printed on. I can't right now recall what the subject matter of the application was, but it wasn't a piece of paper.

And I know you attorneys often like to claim that we don't read the spec. Some/many examiners might not; I can't speak for them. I read the spec, if for no other reason than that searching is easier, and I can preempt future amendments with art that reads on disclosed-but-not-yet-claimed features. Even reading the spec I interpret claims broadly. If you give me a term like "level" without explicitly defining it in the spec, that reads on any kind of level, physical, logical or otherwise. I gather from your spec what kind of "level" you probably mean, but if it's not in the claims ...

[johng]

jexa, I believe most understand your point. I remember the example from PEIT of a claim to a picture frame reading on a toilet seat. Claims like that are what they are, but instead of **only** giving the "go to h__" rejection, also issue a rejection applying relevant art. Both rejections give the applicant notice on several levels how broadly the claim may be *reasonably* interpreted, and an amendment overcoming both will more efficiently advance things.

That being said, examiners do make many silly interpretations. Even from the perspective of the PTO, the "plain meaning" of a term is one that one of ordinary skill in the field of the invention would give, not every possible definition of that term. Often, it involves considering the context in which it is used. This involves a reasonable approach and some experience on the examiner's side.

[Malcolm Mooney]

"Something else I see a lot is "in accordance with"."

In claims? Wow, that's lame.

[Zeke]

MPEP 2111, "PTO applies to verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant's specification." That "taking into account" thingy is not supposed to be optional.

If you're going to argue that X is inherently in the claim based on the written description, you may as well amend X into the claim because your argument is going to place X in the claim anyway. Why force everyone to read the file wrapper to figure out what your monopoly is?

[jexa]

Well, as for the rejections themselves, I'll say this - it is in the examiner's interest to reject as close to the ***disclosed invention*** as possible, because it gives less room for Applicant to argue, reduces/eliminates need for additional searching after amendment, etc. This is one of the main reasons why I read the spec. Office actions are also shorter, because you don't have to do any explanation; rather, it's just "ref A discloses X, Y, and Z (see col.#, lines #-#)".

In other words, if I'm issuing a rejection of broad claims based an a very broad reading of those claims, it's because I couldn't find better art. In that sense, it's almost an Ex Parte Quayle - all you really have to do is narrow the language of the claims slightly (in many cases, all it takes is a single word) - and you'll likely get your Notice of Allowance on next action (provided, of course, that your change doesn't in turn raise other issues).

So, I don't really need to issue two rejections - if I issue the broader one, it's basically saying, "I couldn't find your invention, but your claims are way too broad."

Yes, I'm aware of the DoE problem with amending the claims post-Festo. I don't really know how to resolve that issue in situations like this (which is why I don't get paid a lawyer's salary), but I will say that arguments on the grounds of "you're reading too broadly" are unlikely to be persuasive unless, for instance, the reading clearly lies outside the understanding of a PHOSITA or is clearly contrary to an explicit definition/exclusion in the spec. You are always welcome to appeal, I guess.

[bierbelly]

Definitions or no, sometimes (like in our cases, almost always) there is data included in the spec which we think supports our case. To have the Examiner ignore that until final or refiling is sometimes "detrimental". :^/

[johng]

"In other words, if I'm issuing a rejection of broad claims based an a very broad reading of those claims, it's because I couldn't find better art. In that sense, it's almost an Ex Parte Quayle - all you really have to do is narrow the language of the claims slightly (in many cases, all it takes is a single word) - and you'll likely get your Notice of Allowance on next action (provided, of course, that your change doesn't in turn raise other issues)."

As MM says, WORD!

[jexa]

"Definitions or no, sometimes (like in our cases, almost always) there is data included in the spec which we think supports our case. To have the Examiner ignore that until final or refiling is sometimes "detrimental". :^/"

I'm not really sure what kind of situation you are referring too; it's probably art-specific? I examine electrical/semiconductor/circuit stuff, and it's usually pretty straight-forward. I imagine the mechanical arts are even moreso, whereas the biotech/chemical arts are probably an endless quagmire of special cases.

Another thing you have to keep in mind is that the examiner is not necessarily doing something out of malice. For instance, some weeks I just don't have the time (e.g., end of fiscal) to carefully and thoroughly consider every single minute detail, sometimes I just overlooked something (oops), etc. It would be nice if everyone could sit down all the time and talk things over so we all know where the other guy is coming from, but ...

And, you'll also have to excuse us examiners if we don't exactly believe that all attorneys are the paragons of virtue you guys suggest. Most examiners have had the experience of trying to be nice and having their hand bitten off in return. We only have two hands, so there's no way we're going to risk that second one.

[JohnDarling]

Jexa,

That, "Your claims, purportedly for a semiconductor device, are so broad that they read on Legos" type OA you seem so fond of is specifically prohibited by Rule 104(c)(2), which you should familiarize yourself with. But those of us on the outside are well aware that too few at the PTO consider themselves actually bound by the Rules.

Stop concerning yourself with showing applicants how "broadly" you can interpret the claims with cutesy rejections and cite the best art at your command.

See also MPEP 706.02.

Thanks,

JD

[Malcolm Mooney]

"Stop concerning yourself with showing applicants how "broadly" you can interpret the claims"

Actually, Examiner, I would urge you to do the exact opposite. Thank you.

[jexa]

"That, "Your claims, purportedly for a semiconductor device, are so broad that they read on Legos" type OA you seem so fond of is specifically prohibited by Rule 104(c)(2), which you should familiarize yourself with. But those of us on the outside are well aware that too few at the PTO consider themselves actually bound by the Rules."

Incorrect. 37 CFR 1.104(c)(2) states:
***
In rejecting claims for want of novelty or
for obviousness, the examiner must cite the best references
at his or her command. When a reference is
complex or shows or describes inventions other than
that claimed by the applicant, the particular part relied
on must be designated as nearly as practicable. The
pertinence of each reference, if not apparent, must be
clearly explained and each rejected claim specified.
***

Accordingly, my previous post states:
"In other words, if I'm issuing a rejection of broad claims based an a very broad reading of those claims, it's ***because I couldn't find better art***." (emphasis added)

Nowhere does rule 104 preclude broad reading of the claims, and nowhere does rule 104 preclude rejections based on broad readings, provided that such rejections rely on the best art known.

Nor do I suggest that rejections based on broad interpretations should be given without explanation. Rather, I stated:
"it is in the examiner's interest to reject as close to the ***disclosed invention*** as possible, because it gives less room for Applicant to argue, reduces/eliminates need for additional searching after amendment, etc. This is one of the main reasons why I read the spec. ***Office actions are also shorter, because you don't have to do any explanation; rather, it's just "ref A discloses X, Y, and Z (see col.#, lines #-#)".***" (emphasis added)

In other words, rejection closer to the disclosed invention is desirable to the examiner because explanations are unneeded - implying that explanations would be needed in rejections using broader interpretations.

As such, the examination procedures I have described are not at all contrary to the MPEP but rather are exactly in accordance with its guidance.

[bierbelly]

"Another thing you have to keep in mind is that the examiner is not necessarily doing something out of malice. For instance, some weeks I just don't have the time (e.g., end of fiscal) to carefully and thoroughly consider every single minute detail, sometimes I just overlooked something (oops), etc. It would be nice if everyone could sit down all the time and talk things over so we all know where the other guy is coming from, but ..."

Aha! therein lies the rub, to coin a phrase. No, its not (necessarily) out of malice, in fact most times not. But when you don't have the time to do a good job (is that really OK...to do a half-assed job?), then at least don't stand on your first rejection, stomp your feet and say "arguments not persuasive". Admit your mistakes or oversights and be productive, instead of counter-productive. How much would backlog go down if we didn't have to continually explain the substance of the invention in our responses? After all, it IS in the spec...

[jexa]

I should also include that MPEP 706.02 includes:

"Prior art rejections should ordinarily be confined
strictly to the best available art. ***Exceptions may properly
be made, for example, where:***
(A) the propriety of a 35 U.S.C. 102 or 103 rejection
***depends on a particular interpretation of a claim;***
(B) ***a claim is met only in terms by a reference
which does not disclose the inventive concept
involved***; or
(C) the most pertinent reference seems likely to
be antedated by a 37 CFR 1.131 affidavit or declaration."
(emphasis added)

[johng]

"Accordingly, my previous post states:
"In other words, if I'm issuing a rejection of broad claims based an a very broad reading of those claims, it's ***because I couldn't find better art***." (emphasis added)

Nowhere does rule 104 preclude broad reading of the claims, and nowhere does rule 104 preclude rejections based on broad readings, provided that such rejections rely on the best art known."

You lost credibility again with this statement. If a claim is narrowed, and you apply a new document, obviously the new document is more relevant than the previously applied one. It is this mindset (rationalization) of the office that must be destroyed. CRUSHED! Read 104 again.

[Malcolm Mooney]

"If a claim is narrowed, and you apply a new document, obviously the new document is more relevant than the previously applied one."

Huh? Only in hindsight, my friend. At best, prior to the narrowing of the claim, it's equally relevant to the previously one. But a more narrowly drawn document is quite likely not to be as clearly written as a more broadly drawn document and may have other issues that the more broadly drawn reference does not have.

The reason this comes up is that client's are loathe to put a narrow allowable claim before the Examiner up front for fear that the Examiner will (very reasonably) split the baby and recognize that the broad claims are too broad but that narrow one -- sure, it's allowable.

But the client doesn't want that narrow claim. It's not "valuable". This in spite of the fact that the narrow claim is, 9 times out of 10, exactly what the client invented.

See how it works? Client invents something not terribly valuable. Client goes to attorney and says: Get me a broad patent. In the old days, attorney would say: "No problem."

Now, as Robert Plant once said, there are two paths you can go by. One of those paths is sort of greasy and expensive.

[johng]

MM, I understand your point, but if an examiner reads the claims and the specification, and does his/her search, **both** documents should have been discovered and brought forward.

The "new" document need not be applied in the rejection, but cited as considered relevant.

Examiners should not always research everytime an amendment is made. This is not what an "update" of a search is.

I can see you probably never worked there, and do not understand what a search involves.

[jexa]

The MPEP 706 was in response to JD, not bier.

To bier: I'd say that once you don't have any time left, whether it's "okay" or not to do a half-assed job is out of your hands. Hobson's Choice - do a bad job, or no job at all? Trust me, we're not any happier about it than you guys, but that's reality. Sorry.

As for being stubborn on errors - without understanding the exact situation you're talking about, I can't really comment. It's possible, for instance, that the examiner in those cases doesn't actually see what they're doing as an error. I don't know any examiners that will stick to their guns when they're clearly wrong, unless they've been backed into a corner in some way (e.g., they'd like to allow, but nobody will sign it).

It doesn't benefit examiners in any way to draw out prosecution when there's an obvious way to fix it, and from a count perspective we'd much rather allow than anything else (provided we can), because we don't have to wait 6 months for the abandonment count or risk having to write an Examiner's Answer (which, as I'm sure you've heard, nobody likes to do).

Think about it this way: on first action, I make an error. Applicant's arguments point this out. I now have two main options: I can either stick with my first rejection and go final despite the error, or I can reconsider the case (which itself results in two outcomes: either allow, or second-action non-final). If I go final, I risk quality review finding the error and risk applicant appealing. On appeal, two more choices: go with the appeal and write an examiner's answer, or I re-open prosecution. If I go with the appeal, I have to write the answer (which is already bad) and then get reversed, which puts the case back on my docket. I get a count for writing the answer, but that's it, and now it's back on my docket and I still have to do something about it - but can't get any more counts for actions taken on that case. Re-opening prosecution at the appeal stage is the same thing - lots of non-final actions with no counts.

So, in fact, the way to minimize work is to just reconsider the case when you've made an error. It leaves a bad taste in your mouth when it happens, and you probably have to do another non-final action for no counts, but it ends up being less work in the long run. Hopefully, if you didn't make an error this time, the next action can be final/allowance and you never have to see the case again. So basically what I'm trying to say is, it's not in the examiner's interest to be stubborn ***unless they believe they're right***.

I suppose the whole RCE thing puts a different spin on the issue, but as I said, my art unit doesn't play that game, so I don't know. And really, if you're feeding examiners RCEs when they mess up, who is really to blame here?

[jexa]

"You lost credibility again with this statement. If a claim is narrowed, and you apply a new document, obviously the new document is more relevant than the previously applied one. It is this mindset (rationalization) of the office that must be destroyed. CRUSHED! Read 104 again."

Ironically, that statement isn't a new one - rather, it's the one you quoted and replied "WORD!" to.

Specifically, nowhere do I say I ever apply new art. If you read my prior post again my entire point was that if I issue a broad rejection, that's the best art I could find, so if you can get around it I'll probably allow it.

That's why Rule 104, and MPEP 706 agree with me. I'm allowed to do rejections based on broad readings if that's the best art I could come up with. Nowhere does either the rule or the MPEP say I should just not make the rejection at all.

[johng]

no, no jexa. If you were so sure that the reference was the best, and in your mind believe your action is equivalent to a quayle, then you must have believe your search was comprehensive.

Unless, however, you are re-searching each time. This is not how you should be tackling a search. An update should only include newly published documents, or documents not otherwise availablbe to you.

[jexa]

"no, no jexa. If you were so sure that the reference was the best, and in your mind believe your action is equivalent to a quayle, then you must have believe your search was comprehensive."

That's exactly correct - and exactly what I said. On first action, if I'm doing a broad rejection, that's the best art I could find. If you amend around it, unless the amendment itself raises other issues, it will probably be allowed. So yes, the search was comprehensive. I rarely re-search a case after non-final, unless the amendment includes a limitation I didn't catch the first time. And excuse me, but I know what an update search is, thank you.

There's also the issue where your disclosed invention is to A, B, C, but you only claim A. I have two references: one for a broad reading of A+B, and one for a broad reading of A+C. For the purposes of the first rejection, the references are equally good - it's only until you add either B or C that one reference becomes more relevant than the other.

[johng]

Look, no one is holding anyone a perfection. Everyone makes mistakes, and time is certainly a factor. However, the mindset is most often "this is good enough, I'm done." This predisposition is problematic. It results in too many unnecessary RCE's and continuations.

[johng]

Good jexa, then "WORD" was hopefully taken as very high compliment, as it was intended.

[johng]

"Look, no one is holding anyone **a** perfection."

SEE? ha ha

[JohnDarling]

Malcolm,

If you're going to (mis)quote me, at least do me the courtesy of doing it accurately.

What I said was, "Stop concerning yourself with showing applicants how "broadly" you can interpret the claims with cutesy rejections..."

Thanks,

JD

Love your posts BTW. I'm a fan.

Jexa,

Your points are noted. However, here's what usually really happens:

Claim 1 recites a method of manufacturing a device, comprising...

Examiner sends out OA rejecting claim 1 on a reference disclosing Legos.

Attorney says, "Touche, Examiner, I get your point. Let me amend claim 1 to recite a method of manufacturing a semiconductor device, comprising..."

What does Examiner do? Applies a new reference, never of record before, states all of the arguments are moot in view of the new grounds, and sends FR "necessitated" by amendment.

It's garbage. And it happens all the time. All the time. And the examiners are rewarded for it. Rewarded for not obeying the rules. That's the reason the PTO is in the crapper. Not applicants or their representatives.

Thanks,

JD

[jexa]

Re JD: well, that's probably "milking the RCE gravy train" or whatever. I can see why it's frustrating, and I'm not going to claim it doesn't happen, but that's not the practice in our art unit.

We try to get abandonment or allowance as fast as possible - which requires that we use that good reference up-front. If we're going to go final, we're told to be sure it's on grounds we would be willing to argue in front of the BPAI. If we get reversed, the SPE doesn't permit us to just allow the case automatically - it is re-examined on the merits in light of the decision, so it's more work for no credit if we lose.

I'd also like to point out that the phenomenon you're talking about results from: 1) ridiculous production requirements in some (most?) arts, such that the examiners need to play this game just to keep their jobs, and 2) applicant's willingness to feed examiners RCEs (I suppose due to the expense of the appeal).

One disclaimer I forgot to make here is: if quality review puts another reference in front of me and says, "make this rejection", both the applicant and I are screwed; not much I can do about it. I think you boys have had enough experience with that though.

[Alun Palmer]

I had a long argument with Steve Marcus of the PTO about these issues on news://misc.int-property (that's Usenet, but it would be archived on Google Groups). MPEP 904 tells the Examiner to search the spec as well as the claims. He argued that this only applies in special cases, but he was wrong! I'm not going through this argument again on here, so I'll let you all argue about it!

[Alun Palmer]

Jexa, your last post crossed with mine. You have some valid points in that post. However, it isn't just the cost of the appeal. If we appealed a cr*p rejection we might win, but the patent would essentially not have been examined, so it would not be much more than wallpaper!

[johng]

jexa, I have a feeling you are from 2800. That group generally has a good culture. It seems like a different patent office to me.

However, some other PTO groups are off the wall, all the time! I don't want to name names at this point because I feel we all need to connect and have constructive discussion, exchange ideas etc. Just like the CPF believed the recent past was time to strike and throw everything including the kitchen sink into "reform," it appears now is the best time to start this type of dialog - hopefully on an offical basis.

[JohnDarling]

"If we get reversed, the SPE doesn't permit us to just allow the case automatically - it is re-examined on the merits in light of the decision, so it's more work for no credit if we lose."

This is also specifically forbidden by MPEP 1214.04. Make a copy of that section and staple it to your SPE's forehead. Trust me, it will be an improvement.

While what I described may not be the practice in your art unit (which I'm beginning to doubt in view of your SPE's complete ignorance and/or disregard for the MPEP and rules), it is, unfortunately, the policy in the majority of units.

"One disclaimer I forgot to make here is: if quality review puts another reference in front of me and says, "make this rejection", both the applicant and I are screwed; not much I can do about it. I think you boys have had enough experience with that though."

You should be aware that examiners who post on other sites swear that the scenario you describe is not true. Thank you for confirming that they are full of it.

[jexa]

Well, I think at that point there are several issues. First of all, if you win, the examiner does more work for no credit (as I outlined a few posts ago), so it's not in their best interest to pursue that avenue - the reason they do it is because they know they'll get RCEs instead of appeals. Also, they can't continue the appeal chain very long - if they make another crap NF and FR, and you appeal again, it goes back on their docket, again, all for no credit. That's a lot of work they're doing for nothing. Second, what might happen is that the examiner simply allows the case after they lose (since they can argue to review that, "hey look, I rejected and got reversed, what else do you want?"), in which case Applicant is left with ... well, you know what. Might be the best outcome for Big Company X where quantity > quality, but probably isn't healthy for Small Entity Y that needs a strong patent on crucial technology.

So I guess, in the end, I just don't know what you should do. Which, again, is why I don't get to bill $500+/hr.

However, I think my point stands that any problem with the system here is due mostly to how the incentives are set up.

[jexa]

Well, in light of MPEP 1214.04, what I said about appeals above is partially incorrect. Regardless, that's what happens here, not sure what to say. I also not sure how much that would help you guys in this situation though, given the second option I outline above - is that really any better?

[johng]

Holding examiners to an acceptable "actions per disposal" average would solve some of the problems with crappy work, but would not address the incremental search problem. For the latter, the MPEP should be revised to better articulate guidelines with regard to Rule 104.

[jexa]

"You should be aware that examiners who post on other sites swear that the scenario you describe is not true. Thank you for confirming that they are full of it."

I'm not sure what there is to deny - are they claiming there is no quality review?

Well, one thing I didn't mention is that the unit can fight review (e.g., argue why their reasons for charging the error are meritless), but from what I've heard the success rate is pretty low, and review gets the final word on whether they accept your argument or not.

[Ron Katznelson]

Tim J (from UK),on Continuations etc.:
Thank you for pointing out the new G1/06 European decision, which overturned what I have come to know as the cautionary rule. Since you are from the UK, you might comment on additional barriers in the EU, which I have not addressed. Such are the UK national barriers to effective continuations, requiring applicants to “make ready” their application after 4.5 years. Can one submit any new claims (division or otherwise) in the UK in an application that has been “made ready”?

As to your CIP comment, the issue is not only the priority date. It is the ability to present survivable claims in the first place. Indeed, as you point out, depending on the claims, the priority to which applicants may be entitled to for Section 112 support of their claims may be the CIP application date and not the parent priority date. However, because the US applicant properly claims priority to the parent application filing date, THAT parent application and disclosure cannot by itself be considered prior art against his subsequent CIP claims. Not so in the EPO. That was my point, which you apparently missed. In other words, please point to a similar feature under the EPC in which an applicant is INSULATED from his own disclosure being cited against his subsequent improvement application.

In this regard, by not extending such CIP priority protection to inventors, the EU patent system forecloses on further valuable disclosure opportunities in follow-up improvements that may be the most relevant and mature teachings that inventors can impart to the public. Instead, the EU system encourages inventors to keep such inventions and improvements as trade secrets because there is no patent bargain to be had. The US patent system takes the patent rights - public disclosure quid-pro-quo bargain seriously by actually implementing it throughout US patent law including through the CIP and Section 112 best-mode requirements. In contrast, the rest of the world (ROW) is apparently ignoring the latter two important components.

When discussing the need in the USPTO for multiple claims as opposed to a single claim in the EPO, you attribute the differences to Section 112’s requirements under which US courts construe claims. You are correct in your observation, but that only makes my point. This is a result of the US claim support requirements through disclosure and enablement. These are taken more seriously in the US patent system than in the EU. Like I said, I am not sure the ROW really appreciates and fully *acts* on the patent bargain concept. The First-to-Invent, Continuations, CIP and claiming strategies in the US are a manifestation of the US system being more faithful to the patent bargain and not just to a coarse facsimile of it. This is why I shrug with disbelief every time I hear suggestions from our foreign friends that we should “Harmonize” our patent system with theirs. For them and their socio-economic system, their patent rules might be just right. For Americans, however, such foreign patent rules are a step in the wrong direction. It is like asking a rider on a 4x4 vehicle driving uphill to step down and ride on a donkey instead.

Ron Katznelson

[JohnDarling]

Jexa,

Please be assured that we don't want invalid patents issued as the result of Board decisions either. (I can hear Malcolm's keyboard firing up in the background already.)

We do our best to advise clients as to when an application is ripe for appeal. Unfortunately, the scenario I described above (i.e. examiners deliberately not citing the best art at their command at the outset in an effort to catch the RCE gravy train) is very common, and it makes giving advice very difficult.

I see examiners on other sites posting this nonsense to the tune of, "Well obviously the applicant agrees that my rejection is reasonable, or else they would appeal." Oy frickin' vey. They are so completely misinformed and self delusional that they are beyond working with. I just write those ones off.

You appear much more reasonable. Now all we need is more examiners like you.

But you'll probably get promoted to (mis)management at some point and we'll have to start all over again.

C'est la vie.

JD

[JohnDarling]

They don't deny the existence of OPQA. They deny that 1) many examiners live in fear of the QR boogey man (they do, they did before I worked there, while I worked there, and after I worked there) and 2) that the success rate in fighting QR is low. They all assure me that QR is really a paper tiger.

I have expressed my concerns about the due process implications of OPQA and second eyes, as have others. They are the single greatest piece meal examination programs in history. And PTO (mis)management trumpets them as their greatest success stories.

Still think the PTO's problems are the result of applicants and practitioners?

[agent007]

"Claim 1 recites a method of manufacturing a device, comprising...

Examiner sends out OA rejecting claim 1 on a reference disclosing Legos.

Attorney says, "Touche, Examiner, I get your point. Let me amend claim 1 to recite a method of manufacturing a semiconductor device, comprising..."

What does Examiner do? Applies a new reference, never of record before, states all of the arguments are moot in view of the new grounds, and sends FR "necessitated" by amendment.

It's garbage. And it happens all the time. All the time. And the examiners are rewarded for it. Rewarded for not obeying the rules. That's the reason the PTO is in the crapper. Not applicants or their representatives."

Actually, this hypo can cut either way.

If the spec is concise and to the point, then it makes sense to hold Examiners to a standard of examining claims and spec, and applying the closest art in the first action.

However, if the spec is a rambling and unfocused encyclopedia that is at least 99% obfuscation of that which is already known, it is not reasonable to require an Examiner to "search the spec". Unfortunately, such specs are common.

[real anonymous]

"I think my point stands that any problem with the system here is due mostly to how the incentives are set up."

What do you think of this:

1) if a continuation is filed of an application which goes abandoned, don't give the Examiner a count for the abandonment (since obviously the applicant has not "abandoned" pursuing the invention), but he still gets a count for the next FAOM;

2) if an RCE is filed, don't give the Examiner a count for the RCE, but give him one count for the next action on the merits.

To give the Examiner's counts for actions that resolve nothing (abandonment/continuation, forcing a continued examination but not doing any continued examination) seems to just promote resolving nothing.

And to make up for the lost counts, maybe you could give Examiners 2 counts for:

3) abandonments that don't result in subsequent continuations;

4) allowances that terminate a family or perhaps a family chain (i.e. no subsequent continuations).

Granted 4) might be really dangerous... need to think about that one.

[jexa]

Well, to be fair, I can take some time on applications and still put food on the table (I've heard some arts get 10 hours or less per balanced disposal at GS-14 production ... I just think, "uh, what?"). As a result, my view is likely to be somewhat rosier than theirs. Everyone does what they have to do; if I had to crank out two counts a day, I can't guarantee I'd do things the same way.

I suppose the effect of QR may differ by TC/unit. In our case it's clear that 1) higher errors = more top-down management pressure = clamps on allowances, unhappy SPEs, all that jazz; and 2) QR rebuttal rate is low. Well, unless you consider 30% to be high. The caveat here is that I'm not privy to this information directly, since I'm not a SPE; it's possible, I suppose, that I've been lied to. But for what it's worth, the way people talk around here does not at all suggest that they consider QR to be a paper tiger.

[agent007]

"As to your CIP comment, the issue is not only the priority date. It is the ability to present survivable claims in the first place. Indeed, as you point out, depending on the claims, the priority to which applicants may be entitled to for Section 112 support of their claims may be the CIP application date and not the parent priority date. However, because the US applicant properly claims priority to the parent application filing date, THAT parent application and disclosure cannot by itself be considered prior art against his subsequent CIP claims. Not so in the EPO. That was my point, which you apparently missed. In other words, please point to a similar feature under the EPC in which an applicant is INSULATED from his own disclosure being cited against his subsequent improvement application."

Is there really a per se exclusion of the parent of a CIP from prior art in US law, _because_ of the priority claim?

It is clear that the parent cannot _anticipate_ the claims in the child, because any claim in the child that could be anticipated by the parent would also be entitled to the priority date of the parent.

However, it seems a bit less clear if it is a 103 issue. The Federal Circuit case In Re Chu seems to indicate that the effective dates of the reference and claims governs, as usual. A claim in the child that depends on the new matter in the child has the filing date of the child.

Therefore, based on this effective date of the claim, the parent could be available as prior art (e.g., as a published application or issued patent) to support a 103 rejection of such claim.

[Just Visiting]

"Is there really a per se exclusion of the parent of a CIP from prior art in US law, _because_ of the priority claim?"

No, there is no such exclusion, and as you suggest In re Chu should be enough to convince anyone who still has doubts after reading the MPEP.

As long as restrictions are allowed, a CIP is simply a prosecution convenience tool and accomplishes little that couldn't be accomplished with some combination of a continuation and a separate new application. It simply provides an opportunity to argue support that the claims are supported in the parent in a close case.

[stepback]

"It is clear that the parent cannot _anticipate_ the claims in the child, because any claim in the child that could be anticipated by the parent would also be entitled to the priority date of the parent."

Not so fast my fickle agent-007 friend.

Read Tronzo v. Biomet (Fed. Cir. 19??). Same claim language in the CIP as in the parent and yet the parent did anticipate and render unpatentable the twin claim in the CIP child.

[SF]

In Tronzo v. Biomet, 156 F.3d 1154 (Fed. Cir. 1998), the patentee conceded intervening prior art and, on appeal, the sole issue was whether the parent provided priority. The parent was not the invalidating reference.

[bierbelly]

1) if a continuation is filed of an application which goes abandoned, don't give the Examiner a count for the abandonment (since obviously the applicant has not "abandoned" pursuing the invention), but he still gets a count for the next FAOM;

2) if an RCE is filed, don't give the Examiner a count for the RCE, but give him one count for the next action on the merits.

To give the Examiner's counts for actions that resolve nothing (abandonment/continuation, forcing a continued examination but not doing any continued examination) seems to just promote resolving nothing.

This sounds pretty good, but would really only be effective if the counts were taken from the SPEs. Then there'd be action.

[Erez Gur]

A bit late considering the length of this blog, but CAPat (Nov 1 6:55PM) was angry with the Europeans' tying the claims to the spec language.

Indeed it is irritating (especially when prosecuting a client-written application) but there is a reason: public notice (see G1/93).

If US claims were similarly limited to language in the spec you would actually solve, in one fell swoop, the problems caused by endless continuations, submarine patents and patent trolling.

[Don't Beat on Max]

JAOI - thanks for the compliment :)

MaxDrei - there are a couple of things I really like about the EP system - the three examiner system I think would be a big plus, especially if the examiners specialize in a relatively narrow area, they are far more likely to have a pervasive enough "tribal knowledge" to recognize relevant prior art in a timely fashion. Good stuff.

Where I think the EP falls flat on its face is essentially burdening the applicant with the obligation to shift substantially all attorney time for claim writing to the earliest part of the process. This is very inefficient on a present valuation basis and strongly tilts the effectiveness of the system toward the richer applicant - ie Big Business. In cases where there is truly only one invention described in the spec, this is fine, but a true "flash of genius" takes a lot more claims to fully capture and in fact often represents dozens of discrete claim groups to encapsulate. The superficial response to this is almost always something along the lines of "you should know what the invention is before you apply for the patent" which is superficially reasonable sounding until one recognizes that it calls for an inventor to not only be one of extraordinary techical skill in his field, but to also be at least ordinarily gifted in both a) patent law, and b) the prior art in his field - that combination is hugely onerous in the case of an inventor who truly advances an art (Tesla type work), as opposed to the results of mundane development of known principles (KSR v Teleflex type work).

The flip side is that the EP prior art searches tend to be more robust than the US. Is this a matter of the examiners having more time, better resources, or something else? MaxDrei - I'm curious as to your thoughts on this one.

[agent007]

agent007 wrote: "It is clear that the parent cannot _anticipate_ the claims in the child, because any claim in the child that could be anticipated by the parent would also be entitled to the priority date of the parent."

Obligatory caveat here: In some art areas, (which I don't practice in) a single document can apparently anticipate a claim without providing enablement for that same claim. In such a situation, it would be possible for a parent to anticipate a claim in a child.

[Some Dude]

You're right about the classification system. Classification searches in my area are a complete waste of time. In my area it reflects the technology around 1990. We need at least 30 new subclasses for the new developments in my area. I guess the reclassification in my area will probably get subcontracted out--we sure don't have time to do it ourselves. The allowance rates in my TC vary wildly. One workgroup, in a very different area than mine has 70-80% allowances. My area is 20-30%, but my workgroup is a very different type of technology than other workgroups in my same TC. I believe some of it is due to the natures of different science/engineering areas/industries. The 20-30% allowance rate in my area is probably 50-60% or even more if you track all of the applications from first action to FINAL disposal (allowance or abandonment, that is, not an RCE "disposal"). The allowance rate on the PALM 3205 appears to include express abandonments on filing on RCE (this is the only way the numbers make sense to me, someone correct me if I am wrong), which would seem to make the "measured" allowance rate lower than the "actual" rate. In my area there is so much prior art and the inventions tend to be so incremental that we really need to go back and forth most of the time to overcome all of the art and get the case allowed. If I see something clearly allowable, I will usually indicate it as allowable if I can convince a primary, which is most of the time. It is usually a significant step pertaining to what the independent claim is trying to do that is not suggested or obvious in light of the best references. Believe me, I don't want unnecessary appeals. I have only had allowances and abandonments so far (so good). I have one appeal coming up (my first) which I will send to the board because I believe there is a developed issue between me and the applicant. If I had signatory authority and as much experience with the art as a primary, allowances would probably be much easier. I have seen primaries allow claims that I would be reluctant to allow, but then again, they know the art better than I do and I trust their judgment--they appear to be good primaries. There seems to be nothing but frustration on the part of practicioners and examiners. This is why Congress HAS to have hearings so all parties can be reasonably accomodated. The system as it stands now is preventing everybody from doing their jobs properly. Production/counts/workflow/promotions/awards needs to be completely re-engineered (Accenture?), but that is another thread.

[Some Dude]

I take that last sentence back. The measurement system needs to be completely scrapped and rewritten from scratch after input from the patent bar and POPA. The only real considerations should be giving the applicants enough shots to make their case and giving examiners enough time to do the case properly. NOT how many cases the office disposed of this year. Retention needs to be addressed separately. Hiring outside consultants who specialize in business processes would probably be a good idea as long as the recommendations were taken seriously (they could go through 705 for business methods for ideas) and maybe take input from GAO, OPM, and OMB as they are watchdogs.

[MaxDrei]

Quick answer to "Don't Beat",a few posts above, who thinks the EPC has too much front loading of attorney time, at the drafting stage.

Every culture has its checks and balances. Under the EPC you have to say up front what you think is your contribution to the technical field: in terms of technical features and technical effects. That doesn't take so much time or pages. The only reason ROW writes hugely long apps is to get something effective in the world's most powerful patent jurisdiction: USA. Change US law to that of ROW and apps would shrink to 40% of the size they are now. Then think on the way claims are interpreted here in Europe after issue: in terms of substantive "content", ratherthan literal wording (inevitable in polyglot Europe) See Art 69 EPC and its Protocol which explains how to allocate a scope of protection somewhere between central and peripheral claiming. With courts in Europe going that way on claims, you don't need enless tinkering with claim wording, over generations of continuations. And, hey, if you writing the app couldn't think what you had invented, but only realise later, why should you have a monopoly for that insight, backdated to your original filing date? Somebody else might have, in the interim, exactly that insight and filed on it and, in First to File country, that interloper, not you, should indeed get the pot of gold on that insight. But, hey, it's Saturday, and I'm not spending all day here.

[Just Visiting]

"agent007 wrote: "It is clear that the parent cannot _anticipate_ the claims in the child, because any claim in the child that could be anticipated by the parent would also be entitled to the priority date of the parent."

This may be a pathological example, but if the parent fails to support its claims because of a failure to comply with the best mode requirement, then the claims of child CIP which simply has the best mode added to the detailed description and no other changes could be anticipated by the parent.

[Michael J Kennedy]

How can I contact you about a potential patent application?