IDS Rules Moving Forward

The White House has now approved the PTO’s proposed changes to the Information Disclosure Statement Requirements “and other related matters.”  The final rules have not been made public, however, the rules are expected to:

• impose a requirement for the personal review of, and to provide information about, certain citations;
• permit only timely IDS submissions;
• only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted
• permit third parties to submit prior art up until the mailing of a notice of allowance after application publication;
• no longer permit an IDS to meet the submission requirement for a request for continued examination (RCE);
• permit certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and
• revise the protest rule for dealing with unsolicited information received from third parties.

The continuation rules were finally published about six-weeks after OMB approval. If the PTO follows a similar schedule, expect a notice in later January 2008 regarding additional implementation of IDS requirements. 

Links:

• http://www.reginfo.gov/public/do/eoReviewSearch (Search for recent DOC reviews)
• Patently-O: Prepare for new IDS rules
• Noonan on IDS Rules
• Moatz on Ethical Duty to Read IDS Submissions

Comments

[Malcolm Mooney]

Rule 1.56 was more necessary when the ridiculous "strict TSM" test had to be met before an obvious patent could be tanked. With that test now lying in an ash heap, Examiners should have no difficulty finding art to tank an obvious patent.

That said: bring on the opposition procedure in the US. Please, please bring it on.

[MaxDrei]

Looking in from EPO land, the USPTO is using Rule 56 in a Reductio ad Absurdum approach, to bring home to US patent people outside the PTO that a whole new start is needed, to solve the problems of US patent law. Problem is, any new start has to be within the confines of English common law. No good looking to harmonise then with ROW, because ROW doesn't run any more on pure English common law. England these days is under the umbrella of continental European civil law (China, Japan, etc also run on the world's default legal system: civil law). EPO features(like post-issue PTO opposition) work perfectly well in the EPO's civil law jurisdiction but didn't work in pre-1978 England and won't work in post-2007 USA.

[anonymous]

anon,

"This makes no sense! The vast majority of examiners are producing well over their required production. Yet they claim there is not have enough time. Seems to me that they must be doing something wrong if they can't review a measly 100 cited documents in an IDS using some of that surplus time they have on their hands."

Don't believe the propaganda coming out of the mouth of Dudas and Doll. They usually give their numbers a good massage. The reason for the propaganda of over production because of the number of new examiners just arrived. They don't have production quotas as high as those are more senior and, the SPE/primary sign for the office actions so they don't worry too much about quality. The reason for the IDS because the PTO eliminated the Classification Unit in order to pay for the TQAS implementation. The classification all areas in the PTO is a mess.

[johng]

That was me anonymous. While the phenomena regarding new examiners may be true, the fact that most examiners exceed their production requirements predates the big hiring era.

I remember years ago an examiner, Mark T., a good guy who used to work in Group 2800, wrote a program that would OCR an IDS 1449 form and place all the patents into a APS (the searching system before East/West) search query. As was, and probably still is the way things are at the PTO, his good ideas were never considered worthy of consideration.

The classification mess is a huge problem that has purposely been ignored by PTO management. I'd bet now it is so bad that it would be impossible to fix for huge amount of patents granted over the past ten years.

[YOUR MOMMASAYS]

The PTO is so screwed up they don't realize that their own guidelines tell practitioner's when in doubt, submit. Sure I read everything. I always have and have been chastized by clients and partners alike about reviewing references. I even search before I file, because I feel it is my ethical duty to have a modicum of indication of what is out in the public domain. Still I get chastized by partners and clients. Nonetheless, I try to assist the examiners in their endeavours. My job is to define an invention and get a strong patent. I want the closest reference applied.
Yet even on this blog people argue that they have no duty to search.
Now comes this current management team of the USPTO and they say search by don't cite. I swear I could just slap one of those people for being IGNORANT. That's right IGNORANT.

Look at this quote from MPEP 2004
10. When in doubt, it is desirable and safest to submit information. Even though the attorney, agent, or applicant doesn't consider it necessarily material, someone else may see it differently and embarrassing questions can be avoided. The court in U.S. Industries v. Norton Co., 210 USPQ 94, 107 (N.D. N.Y. 1980) stated "In short, the question of relevancy in close cases, should be left to the examiner and not the applicant." See also LaBounty Mfg., Inc. v. U.S. Int'l Trade Comm'n, 958 F.2d 1066, 22 USPQ2d 1025 (Fed. Cir. 1992).
When in doubt submit Q.E.D. So quit WHINING examiners and the PTO in general. You made this mess DEAL WITH IT.

[anonymous]

johng,

In PTO, the performance rating of SPE base on a plurality of factors, one of the big factor is the percentage of production. I heard that the bonus for SPE or for him to get an "outstanding" rating is when the examiners in his/her art unit producing at or above 110 percent. That is why 110 percent is the implied benchmark for the production in all art unit. Many junior examiners during job interview, the SPE specifically will tell them that they MUST produce at least 110 percent . Anyone produces below 110 usually get harassed by the SPE in one form or another. SPEs have a lot of power over hiring/firing of fellow junior examiner. He also has power over everyday conduct, i.e., he can knock on your door every 5 minutes to check whether you are working, he can order a review of your "online" habits, or order a time clock at the gate, or looking over your office actions with a magnifying glass and will break you unless you quit. Basically, he can make your life hell if you don't do at the level of production for him to get an outstanding. That is why at the one hand you got high production level while having high attrition rate.

[anonymous]

johng,

may be you don't see the implication of this. Basically, the SPE has more incentive to fire someone doing, say at 93 percent production rate, then get someone new examiner making 110 percent. He/she will likely get the bonus because everyone in his/her art unit making high production. But, this does not make economic sense. Because a primary at 93 percent production rate is already producing twice as many cases ,may be a lot more, than a new examiner making 110 percent, not to account for the training and other expenses on the new examiner. I admit there is a salary gap, but this gap (~20-30k) is very small compared to the difference in numbers of cases being produced. On paper, everyone in the art unit is doing great production, but it is hiding the fact that two or three new examiners is doing the same production for a primary examiner just left the office, even if the primary is doing low production. That is why I don't trust the propaganda machine from USPTO management.

[curious]

anonymous

your postings are informative; thank you

[johng]

anonymous,

Thanks. I know exactly what is going on at the PTO at that level. I remember two SPEs who badgered their primary examiners to no end. One examiner was an older primary that had been there over 20 years and was harassed by that SPE for about 10 years (still to this day I believe). It drives people working there nuts! They just want to do 100% and be left alone (one actually practiced the "lights out" routine - I think they teach them these things in SPE school, LOL!)

What you said here is the key:

"Because a primary at 93 percent production rate is already producing twice as many cases ,may be a lot more, than a new examiner making 110 percent, not to account for the training and other expenses on the new examiner."

PTO management cant see the forest for the trees. They have stunted their mental capacities from simply being around one another for too long. It is like a festering virus or disease.

[X-Solo]

Ok, whose turn is it now to sue the USPTO?

[anonymous]

johng,

that is why in a labor negotiation with POPA, the single most important authority the Office desire is the ability to fire someone quickly and efficiently. They would come up with impossible quality goal like two patentablity errors then you go (http://popa.org/pdf/misc/CBA-USPTO-19nov2007.pdf), not to improve quality, but to instill fear into the examiner corp (i know someone who got slapped with patentability error on a non-antecedent basis on a dependent claim). I also heard this from someone that whoever wanted to be SPE is that he/she must learn to fire some low producer. There is also a lot more of number massaging from the management like having someone new hire in probation wont count as a personal in production (basically the SPE get the count percentage from this new examiner for free, btw, i dont know whether this is a fact), etc. The point is that it is not in the interest of the management to have a low attrition rate. The office must have some new examiners in order to balance out the impossible production goal that is set for primary examiners. Personally , I think it is a waste of money because it is expensive to hire someone new and you are gambling on the fact whether that new examiner will provide better production than the one that he/she replaces and whether he/she will stay (it takes about 5 years for he/she to get to the production level as a primary). The climate of fear also make the primary examiner less likely to stay beyond his/her year of retiring. Personally, I believe the previous "reform" was done in haste and the bar should have thought out more clearly when endorsing the PTO with a blank check from Congress for improving quality and hiring new examiners. Instead of using money to provide more hours for searching, training, office action writing (i can use a lot more time writing up office action), the office put more money on the review process. The trouble with this approach, especially in the examination process, is that the more reviewers look at a case, the more mistakes they going to find. That is just the nature of this job. I give you an example, if an examiner allows a broad claim, the SPE reviewes the case as second pair of eyes don't want to allow it, he/she will send emails to a bunch of other SPEs to look for a way to knock down that broad claim. See, the examiner has no chance against so many other reviewers looking at the case for that single claim. The office takes this as an opportunity to claim for more "review resources" to put in this endless circle of reviews. At the end, you see the effect of equating less allowed patents with improve quality as recently announced by Dudas. Now, I hope you see all the pieces fit together .

[johng]

anonymous,

Thanks again. I agree that there are several pieces to this puzzle, and that the present punishing and humiliating level of review is not one of them.

Mr. Dudas gloats over his low allowance rate. This is sad because the means by which he has achieved this "goal" is a major cause of ballooning backlog.

My first SPE used to say with a smile that he dreamed of the day he would have only primary examiners working for him. What he was hinting at was that his job would be relatively easy because he trusted his primaries to perform as professionals.

Now, long-time examiners can't wait to retire. They are upset like never before. As you alluded to above, alienating your highest producers is terribly misguided. It appears the PTO's lack of respect for career examining professionals comes from viewing the patent examiner position as a temporary one.

Regarding funds from Congress, I believe having a "blank check" would have been a good thing if caring, knowledgeable individuals had managed the funds. Unfortunately, the PTO has squandered opportunities, as evident from the catastrophic expansion of the backlog.

The money should have been spent on reinvigorating classification and increasing examiner specialization within an adequately classified collection.

After that, the examiner performance plan should have been revised to give close scrutiny to "actions per disposal."

Also, all current cyclic and subjective review practices should be immediately abolished and replaced with a reasonable review mechanism, such as a review of a sampled number of allowed cases (like the 4-5% in the past).

And they must start treating career examiners as professionals. The younger ones might stick around.

[curious]

johng

I think that all of the funds were spent preparing those confusing claims and continuation rules.

[johng]

"I think that all of the funds were spent preparing those confusing claims and continuation rules."

Like I stated, "if caring, knowledgeable individuals had managed the funds." If I were to run that place in good faith, I would like to have the funds I would need.

[JustanExExaminer]

Anonymous (the one communicating with JohnG) is right on the money.
Within six months of coming into the patent office I, and others that came into the patent office after the big hiring done in the late 90's, were easily able to tell the ship was sinking. Every single change made at the PTO since then has been 3 steps backwards, maybe 1 step forward if lucky (such as in the telework and day 2 initiative changes).

Classifiers abolished? The only good thing about this is that some of them were unskilled idiots who couldn't tell whether something was a machine or the computer to control it, so they would send machines to the computer/electrical engineers with familiarity in controls, and they would send computer control programs to mechanical engineers who searched machines exclusively. The bad thing was they didn't abolish this system to replace it with a better one. They just abolished it.

Hours per BD (For those not familiar with internal PTO lingo, this is the number of hours an Examiner gets for the entire case.) This hasn't been changed since the last time Congress took a look at it in the late 1970s. I can guarantee you that in every technological discipline on the fact of the earth, it takes more than ten times as much time for an Examiner to look through the relevant art and make a descision resulting in a high-quality examination in 2007 as it did in the 1970s. Automated search systems only go so far. Hell, I don't even know if those help out all that much, with all the additional burdens placed on examiners these days, with pre-appeal briefs, supervisors reluctant to approve non-examining time for interviews and quality restrictions, to name a few.

The bottom line is the patent system isn't going to get better in terms of quality or speed until Congress bases the system on doing a quality job upfront. Sure, it's written in the MPEP that the first office action should be a complete review of the prior art with a decision that can either support Final or Allowance upon amendment. That section has absolutely no bite to it's bark when most Examiners can review only about 10% of the prior art they need to in order to do that quality job, given their individual time per art. The other problem with this is that any increase in hours per BD is going to mean larger backlog (although, hypothetically the backlog should get better given a much better quality job done on the first action due to the fact that final decisions - abandonment/allowance, will be coming sooner). This means a much larger workforce.

If I were offered Commissioner of the USPTO, I'd turn it down. Congress isn't going to approve the things that will make the USPTO into what the various parties involved in the patent process want it to be. The ship is now below water.

[question]

any update on these rules? Have they been implemented? if not, when are they expected to be implemented.

[examiner#6k]

No, they are injunctionified, for now.