Interview Before The Examination ("First Action Interview Pilot Program")

By my count, well over eighty percent of patent applications are initially rejected by the PTO. Yet, most applications eventually result in an issued patent.  Many of the rejected patents are amended slightly. It is unclear, however, if those amendments are really made to overcome prior art or rather offered as negotiation chips to the examiner in order to obtain the patent as quickly and cheaply as possible.  The truth is that a non-trivial number of initial rejections might be termed “off course” because they miss the true nature of the invention. These off course rejections end up extending prosecution, increasing the PTO backlog, and causing endless patent attorney frustration.

In the hope of avoiding the problem of potentially off-course rejections, the PTO has created a new pilot program to allow an applicant to discuss the claims with the examiner before an initial rejection is issued (but after the examiner’s prior art search). Of course, under the current rules, pre-examination interviews are already allowed under MPEP 713.02 at the discretion of the Examiner.  This pilot program adds to the rules by forcing the Examiner to prepare a pre-examination search (upon request) and also meet for an interview.  The idea here is to ensure that everyone is on the same page regarding the invention and hopefully quickly issue patents for state of the art inventions.

The pilot program is limited to data processing inventions (Class 707 & 709) that have been pending for a couple of years. Likewise, a qualified application may only have three independent and twenty dependent claims. If successful, it may spread to art units with high-pendency.

Thoughts on Interviews: Over the last few years, in-person interviews at the PTO have lost much of their charm. In the past, a savvy attorney coupled with a tech-whiz inventor could convincingly elaborate the invention — without having the actual interview on record. After a tidy noncommittal “interview summary,” the case would issue.  As the record has become more important, Patent Office practice has also shifted toward examiners taking a harder post-interview look and often “renegotiating” the result. Still, interviews are useful for a patent applicant – just not as useful as they used to be.

My hope for this pre-examination interview is that it can create a communication link to help the PTO better understand the invention before crystallizing a particular position.  The PTO’s approach with the pilot is quite thoughtful because it requires the Examiner to prepare (by conducting a prior art search). This helps ensure that both sides will be ready to go when the interview begins.

Notes:

• PTO Press Release
• First Action Interview Pilot Program Website (with forms, explanations, and requirements).

Comments

[Malcolm Mooney]

"In the past, a savvy patent attorney could blow smoke for an hour to convince the examiner — without having the interview on record. After a tidy noncommittal “interview summary,” the case would issue."

I recall reviewing a prosecution history where the applicant described an "interview" (leaving out all the details except a few biased and conclusory statements) that was actually a well-rehearsed "road show" featuring numerous inventors, outside scientists, company bigwigs, two attorneys, and a substantial slide presentation.

The patent -- a CIP of a CIP of a CIP -- was junk, but the slimy prosecution made demonstrating that fact a rather expensive chore.

[David Boundy]

Once again, PTO management manages to take a good idea and strip it of its major value, and cut off the biggest-bang-for-buck benefit.

There is a simple fact of patent economic life that (apparently) no one at the PTO gets. Big applications (many claims, large spec, many references) get that way for only one reason: the applicant invested a lot of money in this application to get it claimed thoroughly, described thoroughly, and prior-art-searched thoroughly BECAUSE IT'S A VALUABLE APPLICATION DIRECTED TO AN IMPORTANT INVENTION. Big applications are not acts of aggression against the PTO, they are acts to most benefit the public. Big applications should receive proportionally *more* time per claim, not less.

Big applications are almost always the ones that are most at the cutting edge, and where the examiner is most likely to not appreciate the claims or the disclosure without some hand-holding from the applicant.

Limiting pre exam interviews to only the *least* important applications is another example of PTO mis-management's misallocation of resources. Big applications are the ones where a little education of the examiner before examination will pay the most benefit in efficiency, by helping the examiner understand the unfamiliar langauge in the claims, and focus on the key feature. An interview is also the single best way I know of to help the examiner get it right the first time. It's the only way I know of to let the examienr ask questions and get answers in a back-and-forth dialog. Waiting until after the first Action (which, in 3620/3690, 70% of the time reflect complete lack of understanding by the examiner of basic terms of art and the like) to get the examiner focused is a waste for all concerned.

"Focused examination" is incredibly important to everyone, especially those applicants with important inventions. Why does the PTO take every opportunity to avoid it?

[IP Guy]

Brilliant. Perhaps not a perfect solution that solves all everything under the sun, but definitely a major step in the right direction. I hope execution is as good as the idea.

[Anon]

What do you think about a rule that says that the interview summary is drafted at the conclusion of the interview (i.e. w/ all the parties still present), and agreed to and immediately entered into the record.

I recall dealing with a patent in a former life that issued after an interview. The summary was something like: "the parties discussed the claims and the prior art and the differences bewteen the claims and the prior art." The notice of allowance said that the prior art failed to show placement of a pump in an arrangement between element X and element Y, and that such placement was not obvious. The problem was that the claim simply recited "a pump for ..." without actually reciting a placement or relative location.... Puzzling, no?

[Dennis Crouch]

I agree with David Boundy above that more important inventions are generally longer and have more claims -- because attorneys and inventors spend more time ensuring that everything is there.

The proper PTO approach is to charge a premium for the burden of handling more claims. If the invention is indeed valuable, then the applicant will pay.

[SF]

"The proper PTO approach is to charge a premium for the burden of handling more claims. If the invention is indeed valuable, then the applicant will pay."

The USPTO already does charge a premium (excess claim fees) and already has a way of handling the burden (restriction requirements).

[JohnDarling]

"The USPTO already does charge a premium (excess claim fees) and already has a way of handling the burden (restriction requirements)."

Exactly, PTO (mis)management charges excess page and claim fees, collects the money, spends it on lord knows what, and then never gives the applicant or the examiner what was paid for.

These guys, and gals, should be running the airline industry.

[Michael R. Thomas arguably the worlds only inventor of signifence.]

This program is a step in the right direction if it was combined with my idea of retaining intellectual materials rights contained in an application weather or not the patent eventually issues to the original applicant. Increasing the time of ownership rights ensures compensations for the original concevers. In todays world of specializations conception needs to become seperate from R+D to insure compensation from big business. They currently hold all the cards dealing dirty to the producers of the intelectual materials.

[joe o'malley]

The patent office is much better about doing telephonic interviews than they used to be though. They used to do them grudgingly but now it is easier to set them up. Even after final rejections.

[Malcolm Mooney]

"Big applications are not acts of aggression against the PTO, they are acts to most benefit the public."

The application I referred to in my comment upthread was big and the applicant definitely spent a lot of money on prosecution. In part, that money was spent on paying attorneys to manage the large volumes of paper and information that was shoveled before PTO Examiners who really had no hope of keeping up with the ever-expanding prosecution histories, especially after the fifth or sixth continuation-in-part and/or divisionals thereof were filed.

The "benefit" to the public was that the applicant was granted a patent on the prior art, which related to a method for treating disease. The "benefit" to the public is that the public was forced to pay higher prices as the transaction costs of everyone involved increased as a result of, e.g., attorney fees.

Let's keep it real, folks.

[me]

Informal interviews are one of the best tools to getting patents issued, and reducing the frustration of the Examiner and the Agent/Attorney - bring them on!

[Kevin E. Noonan]

"Over the last few years, in-person interviews at the PTO have lost much of their charm. In the past, a savvy attorney could blow smoke for an hour to convince the examiner — without having the interview on record. After a tidy noncommittal “interview summary,” the case would issue. As the record has become more important, Patent Office practice has also shifted toward examiners taking a harder post-interview look and often “renegotiating” the result. Still, interviews are useful for a patent applicant – just not as useful as they used to be."

1) a deeply cynical remark (since it paints with such a broad brush)
2) that ignores the incentive management has built into the count system for examiners to improvidently allow cases

Plus, the statement that "most cases grant as patents" is out of date with an Office proud of its 44% (and declining) grant rate.

This is just another way to reduce the backlog by picking the low-hanging fruit (simple applications with limited claims). Just wait until the "success" of this program is used to punish the kind of "difficult" applications David Boundy discussed earlier in this thread.

[GP]

This is standard government propagated stup1dity.

Here's what happening.

There are 20 dogs in the room.

The PTO wants the dogs to go over to corner X and stay there.

But the PTO has made a rule that, every day, 100 pounds of raw beef are dumped into corner Z.

After observing, day after day, the dogs spending most of their time in corner Z, the Patent Office proposes placing life sized replicas of Scooby Doo in corner X to help entice the dogs to say in corner X.

Why are there so many idiots on both sides of this issue?

This is NOT about whether the 1st set of rejections are correct or incorrect.

If you believe that, then you also believe that the Examiner's goal for the 1st Office Action is to get to the right answer.!!!

I'll sum it up for you in 1 word:

COUNTS.

If the analysis of how to improve patent prosecution does not include the tremendous distortion that COUNTS add to the system, then the analysis is irretrievably FLAWED.

You want to get the Examiners to correctly issue 1st Office Actions?

Then offer them extra counts for getting the 1st OA correct.

Otherwise, of course they'll run to the meat and force the RCE.

My parents are aliens.

They accidentally left me on this planet with all of these mor0ns.

I'm hoping they'll stop by soon to pick me up.

[We're Going to Need a Bigger Boat]

I am curious as to how the PTO can put into place this complicated procedural scheme without the need to issue new regulations (and have notice and comment per Judge Cacheris' opinion) - perhaps because it is only a "pilot" program?

I assume that if the pilot program is successful, they will issue new regs - so the question is whether they will go through notice and comment proceedings for those regs, even though they are "procedural" (again, see Judge Cacheris' opinion)

[me]

Not sure they would need to have a comment period or anything - as noted above the Office has been doing these for years.

[Patent associate]

If this is anything like the required interview prior to the first action in the Accelerated Exam program, then this is going to be a big joke. Here's what the "interview" has consisted of in such cases I've been involved in.

Examiner: I'm calling to let you know that I'm rejecting all of your claims as not enabled and as obvious over the prior art. You'll get my rejection in the mail next week.

Attorney: Um, ok. Thanks.

[Anon E. Mouse]

GP, buried in an analogy I'd never use, you have a strong point.

That is, never underestimate the power of incentives. Give them the biggest weight you can, it still won't be enough.

[e#6k]

I was just about to alert you guys to this. Crazy, the interview would seem to take longer than writting a FOAM and seems to provide no real benefit to the examiner.

"My hope for this pre-examination interview is that it can create a communication link to help the PTO better understand the invention before crystallizing a particular position. "

If I read the case, which I have so far done with every one, I understand the invention just fine. Most of the time, I understand it too well because what they did boils down to a days work in any number of 1000's of labs. My crystallized position is based on what they said specifically.

Also, here's a quick alert for you guys. The whole thing about non-analogous art arguments that we were discussing in re the rodent trap with a special switch that came from a cattle prod is apparently kind of true. They're not upholding the non-analogous art arguments at the board as much so I hear from official sources.

Oh, and sorry I was out yesterday if I missed anyone.

[bierbelly]

In my experience, the problem is not with the examiner understanding the claimed invention, but instead with the examiner understanding the limitations of the prior art disclosures. Examiners seem to believe that their "duty" to read the claims under examination as broadly as possible also extends to their interpretation of the prior art. I'm constantly amazed at what examiners can read into the prior art, which isn't there.

How will this interview process address that?

[e#6k]

"but instead with the examiner understanding the limitations of the prior art disclosures."

I would agree that the precise point that most attorney's would take issue with me would be that one. The problem here is that you may or may not be dealing with someone who has been trained in technical arts that draw heavily from one another to even make up basic concepts. It's hard not to apply one's knowledge of what one knows is basic (but does not have the reference in front of you about, nor has the time to dig up) to a case. Very hard in some instances. It's usually hard for two reasons. You don't want to stay there all night finding a reference that teaches what you already know is basic. And, the other perhaps more poignant reason is that there is a vast variety of technical books that I have been exposed to (as has anyone in the technical arts), I do not have those books on hand, nor does the PTO have a copy that I know of. If they do have it, it's buried in a library somewhere. And that would bring us to one of the real problems with examination today. The examiner no longer has "the art" at his fingertips. Books are too widespread amongst those in the art, but yet not all of them are owned by everyone in the art. It would probably be prohibitively expensive for the office to obtain all of these references even though it would no doubt lead to much better rejections. Further, all those books need to have a new version bought every few years to keep up with all the advances in each niche.

This is hopefully where books on the net come in and save the day. But, that hasn't happened to a large extent just yet.

[e#6k]

Oh, and lest you believe I'm just too lazy to go to the library, nah, I did, it's sorely lacking. I hear about other stic libraries etc. but I've yet to find good solid references (which I can find online for sale easily) for most subjects of my apps. I could find you three loosely relavant references for nearly every case I have in online books for sale, and nobody knows if the specific example of the instant "inventlolion" is in either of those three 200$ books. Mind you, three books is usually the minimum.

[Veteran Attorney]

I thought e#6k found knock out art every time with a 10 second google search.

In an age where access to information is at unprecedented levels, it's rather unbelievable that you would need to spend all night finding a reference that "teaches what you already know is basic."

[Wasn't me]

e#6k:
You must be the super-Examiner. Easily 80% of the time, the FOAM uses irrelevant art, and the Examiner mis-reads the application and the references. It's typically an obvious keyword-hit affair where items are completely out of context. ("Reference discloses a widget A at line 57" - where when you read the reference it says something like - "for the love of god use anything but a widget A in this circumstance".) In 90% of those cases, I get a second office action with completely new references that is virtually unrelated to the first office action. In the other 10%, I get a cut-and-paste Final, and the Examiner either re-opens prosecution after a response or after the Appeal Brief.

I work in several art areas, and I haven't noticed a difference across art areas. I see the same Examiners in some cases, and some of them I can tell by the Examiner name that it's going to be a decent, brain-engaged office action. For the most part, I could write a macro to crank out a search and mindlessly regurgitate keywords back to simulate the FOAM quality.

Maybe we should just automate the FOAMs, and only bring in human Examiners for the second office action. Maybe we've already done that, and no one is admitting it.

[Budge]

Dennis

Psueodo-anecdotal stories that present the patent system (examiner and attorney) in a bad light are harmful and inaccurate. I make specific reference to your "blowing smoke" comment. In the past, patent attorneys had 30 minutes to make a case to get their application allowed. I believe what attorneys did was honsest hard work that (i) brought clarity to the examiner, and (ii) allowed the attorney to compromise more effectively. During an interview, the Examiner also had the chance to bring clarity to the attorney about his position (i.e. "There is no way I will allow this case without amendment-tell that to your client.") Professors have a tendency to undermine the system with comments that seem factual-like Lemley's "wearing the examiner down" arguments that brought us the last rule package. Kindly refrain

[anonymous]

"It's typically an obvious keyword-hit affair where items are completely out of context."

No kidding. I'm waiting for them to do a keyword search on a dictionary: "Merriam Webster discloses a widget (see definition of a widget), a connection (see definition of connection), a gadget (see definition of gadget) ... it would be obvious to combine ... "

[anonymous]

... correction: it would not be an obviousness rejection. It would be an anticipation rejection.

[e#6k]

"In an age where access to information is at unprecedented levels, it's rather unbelievable that you would need to spend all night finding a reference that "teaches what you already know is basic.""

You know RA I would be inclined to agree with you except I can pull no less than 7 reference books off of my shelf right now which are excellent "general view of the art" references but fail to disclose anything more than a cursory explanation (a paragraph about a major topic of interest? W T F? Where's the motivations to use this thing?!?!?!?!?! Sure, I know some of them, but it's nice to have them in writing) of many of the diverse subjects that my applications delve deeply into. As such, I can only presume that books entitled "Niche no. 1" would be a more complete discussion of that particular niche of the art. Note that books entitled "Niche no. 1" by J.K. Nobody and "Niche no. 1 applied to manufacturing" by R.A. Anon and "Niche no. 1 Fundamentals" by Your Professor and finally "Niche no. 1 as applied to X Field" by Your Primaries Old Classmate are all widely available for the low low price of 200$ a pop and each have numerous "embodiments" of the subject matter at hand, with a least one of them probably being the exact embodiment the applicant used to make his inventlolion.

That being said, remember VA, just because I didn't find his invention, which I can already tell is, doesn't mean that I can't find his overclaimed invention with a 5 second googling. The problems arise when he wants to start amendloling his claim because my embodiment looks different etc. (note that I am not saying that this is not a valid reason for differentiating claims, but that in many cases the changes are obvious, but that I do not have the references to back up what I know, and the attorney knows this and uses it to push the case to issue with claims that, lacking the presumption of validity, would be nothing more than manure, but after having obtained that presumption are difficult for the opposition to find sufficient information to invalidate).

I am interested in issuing as nigh on perfect valid patents as is reasonably possible, not a valid patent every 10 patents issued, or even a valid patent issued every 2 issued. I understand there are limitations to the system, and I also understand that there is a point at which the failures (or the limitations affects on) the system necessitates changes in the systems result (judgments, presumptions of valid, injunctions, remedies) and also in the system itself (claims/con rules) to compensate for the limitations, or failures, of the system. Thankfully only 5% of the patents will count for anything anyway, so that's nice, but still doesn't make up for having done a bad job (even if the bad job is excused by limited resources).

I could give you examples of things you couldn't find in 15 hours or less that I've found and I would bet thousands of dollars that you couldn't find them in 15 hrs or less. Sometimes the search just takes longer. Nevertheless, bam, there's the good art after awhile. Many times this invloves reading an NPL all the way through (there's 20 mins) finding all the relavant NPL citations from that piece, finding all 10 journal's online sites, figuring out how to navigate that journal (some have horrible user interfaces), find the references in that page that link you to another journal, and finally you find your reference. Then bam, you found the 102b on the overclaim, and 103 on the entire invention. The applicant will not concede the 103 to you (presumably For Great Justice, i.e. for the uninformed, Just to be a Prick) but it will exist and you will hopefully know it. Just like you took 20 hrs to find the ref, you know that with another 15 you could find their exact embodiment, or an embodiment to 103 in easily. Many times this is what RCE's provide, 15 extra search hours to get the specifics after the overclaim is gotten rid of.

I have a question, when I see a revocation of power of attorney in cases that look locked up, yet the applicant will not abandon, is that a sign that the attorney likely told him that his inventlolion is now blasted to smitherens by the art and he cannot prosecute it further even though the applcant wants to, or what would be the most probable answer for why that happens in more than a few cases of mine? Seems like they change attorney's rather often.

[e#6k]

I agree anonymous lol def anticipation. However, let me ask you something, if the dictionary definition of a word is two separate things, one broad, and one less broad with the less broad definition being the most pertinent to the art at hand, then I would be correct in presuming that the reference using that word is using it as the more narrow definition correct?

[patent valuation]

e#6k,

let me fix this for you:

"... but after having obtained that presumption are -difficult- _expensive_ for the opposition to find sufficient information to invalidate ..."

leading to the rule-of-thumb that a granted patent is worth at least the cost of researching and filing a re-exam request ...

[Veteran Attorney]

"I have a question, when I see a revocation of power of attorney in cases that look locked up, yet the applicant will not abandon, is that a sign that the attorney likely told him that his inventlolion is now blasted to smitherens by the art and he cannot prosecute it further even though the applcant wants to"

No.

[JustAnExExmr]

Posted by: GP | Apr 16, 2008 at 01:32 PM
"I'll sum it up for you in 1 word:

COUNTS.

If the analysis of how to improve patent prosecution does not include the tremendous distortion that COUNTS add to the system, then the analysis is irretrievably FLAWED."

I motion for GP to be appointed to run the USPTO. Seems to be one of the few that understand that a 1 step forward, 3 step back approach does not move you forward.

[lower]

"I have a question, when I see a revocation of power of attorney in cases that look locked up, yet the applicant will not abandon, is that a sign that the attorney likely told him that his inventlolion is now blasted to smitherens by the art and he cannot prosecute it further even though the applcant wants to"

E6K, FYI, patent applicants change attorneys for any number of reasons. Attorneys retire or die or change firms, corporations switch to a lower-priced attorney, in-house can't get it allowed so they send it to outside counsel, are just some of the myriad reasons for it.

Based on your hostility to patent attorneys, I think what you meant was, can the attorney prosecute further without violating ethics rules? If/when you become an attorney, you will know the answer is yes, there is almost always a way to ethically prosecute further. For example, appeal to the BPAI, then to the Federal Circuit, and finally to the Supreme Court. I suppose only if the Supreme Court said no, your claims are unpatentable, would the attorney have to tell the client the application cannot be prosecuted further. And that assumes another claim limitation can't be added. The same thing goes for patent litigation. As an example, I think Festo has had 12 published opinions in the same litigation.

[anon]

Why doesn't the USPTO switch to a modified PCT type system to reduce backlog? i.e. you have to pay for search and examination.

Step 1) File application with just the application fee. No extra claim charge at this phase.
Step 2) Pay search fee at 1 year to get a preliminary search.
Step 3) Applicant can file voluntary amendments based on the search results.
Step 4) Applicant must pay an examination fee to have the Examiner actually examine the application. Claim surcharges apply at this point, providing an incentive for the applicant to revisit the application and trim less desirable claims. The examiner can of course do a supplemental search.

As I see it, a fair percentage of patent applications would completely leave the PTO's docket during a couple windows when applicants decide the application is no longer worth the cost of the USPTO fees, either for business or patentability reasons. It could also improve the claims before the first Office Action.

[anon]

I recently had an examiner interview and the Examiner prepared an Interview Summary and placed it in the file history. Does the attorney still have to provide his own written summary of the interview as well?

[e#6k]

"Based on your hostility to patent attorneys, I think what you meant was, can the attorney prosecute further without violating ethics rules?"

Nah, I was genuinely wondering why they'd change right in the middle, seems like pulling the people that MADE THE APP off the case would be a bad thing, but what you propose is indeed a good question. Why we don't have an enforcable ethics rule against that is probably an even better question. This whole system boils down to people acting ethically, and when people aren't, why are they still included in the system? Crazy.

[Malcolm Mooney]

"is that a sign that the attorney likely told him that his invention is now blasted to smitherens by the art and he cannot prosecute it further even though the applcant wants to"

That is the funniest comment I've read here in a long time. An attorney telling the applicant he can't prosecute the application further even though the applicant wants to?!?!? That only happens in the extraordinarily rare instance where the applicant refuses to pay.

[e#6k]

anon- I usually just see them acknowledge the interview (date time, people, subject matter etc) in a section titled "interview" etc. in their response. Sometimes they even go out of their way to skew the discussion as a bonus for me to have to set the record straight.

[Malcolm Mooney]

"Nah, I was genuinely wondering why they'd change right in the middle, seems like pulling the people that MADE THE APP off the case would be a bad thing..."

That raises an interesting question: how frequently are applicants' requests for substitute/change of Examiners being granted these days?

[Malcolm Mooney]

"Sometimes they even go out of their way to skew the discussion as a bonus for me to have to set the record straight."

At certain times, it's better not to raise the issue. Later one can argue that "the reason the issue wasn't raised is because one skilled in the art would instantly understand that the Examiner had committed an obvious error."

[CaveMan]

Gawd there goes Mooney again with the Interview paranoia. Oh yes, its all a big plot by "slimy" prosecutors who are out to get Mooney by brokering secret deals in the back rooms of the patent office. Give me a break.

Mooney, have you ever BEEN on an Examiner interview?

[CaveMan]

The need for a "pre-first action" interview suggests that the claims were so poorly written that an Examiner acting on their own could not interpret the gist or the scope of the invention. Also a "pre-first action" interview smells of undue influence.

Only in the before first action scenario, could Mooney's paranoid fears be realized. In such a scenario, an attorney could go in and steam roll the Examiner with a bunch of smoke and mirrors and precipitate a first action allowance without much of a record. First action allowance might seem like a good thing, but oh how it will all unravel during a litigation. Basically, first action allowances shift the costs of examination to litigation firms where it is most expensive.

It would be nice if all first actions were a little better, but it really doesn't matter since first actions are usually just a way to get some sort of comments on record before the case is allowed. I'm not sure that's a bad thing.

Also, I'm not sure where Dennis is getting the idea that interviews have lost their charm. They are an essential tool particularly for after final practice - where they belong.

Dennis says: "The truth is that a non-trivial number of initial rejections might be termed “off course” because they miss the true nature of the invention. These off course rejections end up extending prosecution, increasing the PTO backlog, and causing endless patent attorney frustration."

Examiners are no different from good attorneys in that its their job to focus *on the claims* If the true nature of the invention is missed, its probably because some bonehead attorney drafted a crappy set of claims. No wonder there is endless attorney frustration (not to mention endless billings).

[pi$$ed off random.examiner]

I have to share my thoughts on the blowing smoke remark (now scrubbed), both with Dennis & Budge above. You can't go a day on the patent law blogosphere without someone dumping on examiners and/or the office not taking pride in their work, how important the work is, etc. etc.

As an attorney (or at least one who was "minimally-competent" enough to pass a state bar) who is also an examiner, I have to pounce on this. Based on my experiences, this (i.e. "blowing smoke") is all that some attorneys believe is required. I was really disappointed to see it come from a patent law professor and former big-law boutique-firm attorney. If you were being cavalier with your words, Budge was right to call you out. However, I honestly believe some attorneys adopt this (or other approaches) to get a case allowed. It is totally inappropriate and unprofessional.

Step back from your own cases and ask yourself "Would I want a system where someone could come in, BS for a few minutes and walk out with a patent?" No. As someone who plans to leave the office and go into practice myself, I dont want that system.

The stories of f-ed up interviews in the Office are legion: Attorneys showing up drunk - happened. Attorneys from law firms (I wont name the one I'm thinking of, but those who know, know) coming in and yelling at examiners - happened(-ing). Attorneys telling examiners to their face that they didn't read the reference applied in the office action - happened (to me!).

For a comment like that to appear on "the most widely read patent law blog by everyone in the world," sponsored by a big fancy boutique firm is outrageous, because this (see above) is what that comment means to us. Do you expect to be treated with professionalism when this is how you behave?

Let me flip it around and use Mr. Boundy as an example. First off - the entire patent bar (GSK, Tafas, et al) and the examining corps owes him their gratitude because as near as I can tell, he is the only real lawyer out there who sees the system for what it should be and what it is and is willing to do something about it. Read any of his remarks on any proposed rule-making, and you will see what I mean. I have nothing but respect for him. Imagine you are David Boundy - or if Mr. Boundy himself would care to respond - how you would feel if someone takes your hard work and brushes it aside with short shrift. You'd probably be pretty pissed off. (How did you feel Mr. Boundy when you read the response to your remarks in the Federal Register?). Well, guess what? Some examiners give a ___ about the job they do and do their best. I like to think I do. When attorneys come in talking about anything other than the claims and the reference, it is an insult.

I had an interview not long ago on some (in my opinion) valuable technology. I rejected it. Why? The claims read on the reference I applied. 102. The attorneys and inventor came in prepared with proposed amendments and ready to discuss the CLAIMS and the reference. All they had to do was change one word and the reference was no good. They were smart enough to figure that out and I agreed with them. I haven't received the formal amendment/arguments, but when I do, I will search it one more time (because that is my job) and if I cant find anything (I dont think I will), I will allow the case and I will be proud to have my name on that patent. I didn't blow smoke in their face, and they didn't in mine. Someone invented something and they're going to get a patent for it. If every case of mine was like that, I would enjoy my job a lot more than I do. Regrettably, there are those out there (many more than I thought) that will chuck fact and law in favor of smoke and mirrors.

My take on the new program? Quit dumping your time/$ into pilots and examine cases.

I'm done.

[just wondering]

Isn't it better that the examiner give the claims their broadest interpretation in his initial search and not be tainted by a claim interpretation from the applicant during this pre-examination interview?

[just wondering]

Dear pi$$ed off:

Thank you for your posting. About a year ago, I was interviewing an examiner. Before we got down to business, we were making small talk and I asked her what she like least about the job. And she replied when the patent attorneys from a specific nearby firm (which I won't name) "come in their suits and scream at me." As a patent attorney I was embarrassed.

[CaveMan]

just wondering - you hit it exactly.

The pre-first action interview has been strongly discouraged over the years precisely for that reason. The applicant/attorney should not be permitted to interfere with the delicate initial examination process just because some screaming attorney in a suit's big client wants no file history.

I agree with Pi$$ed off.

The PTO should stop trying to fiddle around with lawsuits, goofy pilot programs that assuage the uninformed and trivialize years of careful consideration on the part of the PTO and the patent bar in addressing the underlying issue, trademark day, and the like, and just do their stinking job to the best of their abilities. Does such a concept still exist?

It is interesting to note that the underlying issue of just about every pilot program has already been addressed in existing PTO rules whether permissive or preventive.

[CaveMan]

Its interesting to note that the MPEP 713.02 must have been recently revised to change the language of the cited section since, as I recall, interviews before the first action were rarely granted and in fact discouraged.

Also 713.02 now seems to have some gibberish about how in such an interview, the applicant should submit a paper citing no more than 3 of the closest references and explaining how the invention distinguishes over them (a response before a first action - how convenient for the PTO). Talk about a shift of the burden.

I would NOT want to be an attorney recommending THAT procedure.

[CaveMan]

Also, as Budge pointed out, its a little irresponsible for Dennis to describe such a provision as an innocent and self evident attempt to resolve a situation that "has been a problem" - since when. Incidentally, with all due respect, if Mr. Boundy feels the need to hand hold, then he is not drafting claims effectively I would submit. While seemingly expedient, hand holding is IMO a fundamentally improper attempt to influence the examination process.

Just pick up an MPEP from, say, Eighth edition, revised Aug 2006 and you will see that allowing a pre-first action interview is a departure from norm, which was to strongly discourage the notion of a pre-first action interview.

713.02 (MPEP 8th ed. rev 4) states "...A request for an interview in all other situations [besides a continuing or substitute] before the first action is untimely and will not be acknowledged if written or granted if oral."

It did not say "may not" it said "WILL NOT"

[Veteran Attorney]

"Nah, I was genuinely wondering why they'd change right in the middle, seems like pulling the people that MADE THE APP off the case would be a bad thing"

How do you know the attorney prosecuting the application is the person who wrote the app, or MADE THE APP, in your parlance?

You don't.

Do yourself, and all of us a favor, and stop pretending that you know anything about what goes on between applicants and their counsel.

And please spare us your ruminations on attorney ethics. We all know you can play that one note "attorneys are all slime" song. We've all heard it. Move on.

"As someone who plans to leave the office and go into practice myself"

Pi$$ed off, when, or should I say if, you make it into private practice, your conversion is going to be painful. Short, but painful.

[Just Visiting]

"a non-trivial number of initial rejections might be termed “off course”"

I'm wondering why this article is considered controversial. Dennis isn't saying that most FOAM are off course. He's saying some trivial number are off course. Further, it isn't necessary to place the blame on the examiner or the practitioner for the off course initial rejections on the examiner in order to suggest that this pilot program might be helpful.

If the initial examination goes off course because the examiner believes the claims say something different than what the drafter believes they say, wouldn't it be helpful to get this problem corrected before the first OA issues regardless of whose fault it is?

I certaintly agree that these discussions would be a lot better without the examiner/practitioner bashing and fault finding, but maybe some people are a bit too sensitive after being scraped raw by other blog discussions.

I'm curious about why the office thinks it's okay to pocket excess claim fees even though they are going to make you dump any excess claims to participate in the program.

[David Boundy]

Dear pi$$ed off random.examiner - thanks. I appreciate it. You are asking the right questions. I can't today, but will elaborate on the things you asked me to elaborate on as soon as I can.

Dear CaveMan: "if Mr. Boundy feels the need to hand hold, then he is not drafting claims effectively I would submit."

In my cases, I have two recurring problems, that confirm (I think) that my claims are drafted "effectively." The one I'll comment on here is that - at least in the arts where I practice most, computers (2100) and business methods (3620/3690), examiners simply aren't familiar with the established jargon in the art.

In 2100, the problem is that there are so many concepts that every specialist in the field knows and that are defined precisely within the art - "segment descriptor," "segment," "page" "page table entry," "pipeline flush" - but that examiners simply aren't familiar enough with to really get. I draft my claims in reliance on the precise (broadest reasonable, but nonetheless precise) meaning understood in the art (I have a CPU board that I helped design hanging on my wall and was invited to give a lecture at M.I.T. a few years back - I KNOW this stuff). I draft my claims "effectively" for one of ordinary skill, but I have to be able to assume ordinary undergraduate levels of knowledge. I don't expect examiners to be omniscient, but I do expect them to be teachable. And an interview is a great opportunity to open that. My 2100 cases often bog down when an examiner decides not to be teachable, and relies on personal opinion: "my broadest interpretation is x" when the examiner is unable to provide any evidence (aka "reason") whatsoever that the "broadest *reasonable* interpretation *consistent with the knowledge in the art*" is anything other than the definition that I provide in a technical dictionary.

In 3620/3690, the problem is that there are very few examiners who know the first thing about the subject matter. I had one examiner who told me in every phone interview "I have an MBA from [very very fine business school]" but who then would tell me that loans are made at the same interest rate whether secured by collateral or unsecured. I've had BusMeth examiners tell me that a "mortgage" is identically the same thing as a "lease," that a "landlord" is identically the same thing as a "tenant," that a "lease" does not involve payment of money or other consideration, that a trading feature that adjusts a party's market position to protect the party at the party's own request and for the party's own benefit is a "penalty," etc. Common terms of art like "order" "market maker" etc are simply unknown to the majority (at least the majority that I get by my luck of the draw) of examiners in 3690. If we could have a pre-exam interview to just go through the claim language, we could figure out which terms the examiner accepts as established terms of art, so we won't disagree about them, and which are unfamiliar to the examiner, so I can provide a dictionary.

The second problem is when the Federal Circuit, a decision of the BPAI or Petitions Office, or the MPEP says "an examiner must" and the examiner says "well, that doesn't mean me," and the SPE/TC Director/John Love backs up the examiner's refusal to follow "must." But that's a different topic for a different day.

[Malcolm Mooney]

"For a comment like that to appear on "the most widely read patent law blog by everyone in the world," sponsored by a big fancy boutique firm is outrageous, because this (see above) is what that comment means to us."

When you get a grip, please try re-writing this part. It's incomprehensible.

All Dennis did was state one of those ugly facts about what lawyers are inclined to do when they don't have any other bullets, i.e., spew out some baloney. Did someone actually believe that patent attorneys were different?

What he didn't mention was the other "method" I saw practiced by "seasoned" prosecutors: outright begging, usually accompanied by whining along the lines of "C'mon Examiner, you can't be serious, why can't you just allow this one claim? My client is going to be really disappointed." etc.

[David Boundy]

Let me tie a bow on the 3620/3690 observation - I don't think these examiners are evil. They're brave. Most don't have business degrees, most of the ones I work with are physics majors. But they stepped into a breach that needed to be filled, knowing that they didn't know the subject matter. That's great. And it makes the examiner's job, which is always REALLY HARD even HARDER. That's why I think it's so crucial for attorneys and examiners, especially in complex cases, to talk early on so the attorney - who gained a lot of knowledge from the inventor at considerable expense - can pass it on to the examiner.

I view prosecution/examination as a cooperative goal to get the right patent - the exact patent that the law says my client is "entitled" to - no broader, no narrower. The more information that flows between attorney and examiner, the earlier, the better.

[Malcolm Mooney]

Boundy

"I've had BusMeth examiners tell me that a "mortgage" is identically the same thing as a "lease," that a "landlord" is identically the same thing as a "tenant,"

I assume you meant to write "effectively the same thing" rather than "identically the same thing."

The phrase "identically the same thing" is meaningless.

For the purposes of determining, e.g., obviousness, it's not difficult to imagine circumstances where "mortgages" and "leases" are effectively the same thing. But I can understand why a practitioner seeking a business method patent might feel compelled to act like a brain-damaged visitor from outer space and argue that every method of turning a profit is "totally different."

[CaveMan]

Mr.Boundy, I would urge you to separate yourself from your achievements for a moment and consider the following. You said: "Common terms of art like "order" "market maker" etc are simply unknown to the majority (at least the majority that I get by my luck of the draw) of examiners in 3690. If we could have a pre-exam interview to just go through the claim language, we could figure out which terms the examiner accepts as established terms of art, so we won't disagree about them, and which are unfamiliar to the examiner, so I can provide a dictionary" The last time I checked, a good specification should serve the function that you describe.

Your reg number is under 40,000 therefore I have to believe that you have at least a fair amount of experience. Well I can tell you that as someone who has handled literally thousands of cases in several high production environments, that if you have to handhold an examiner before the first action, then something is wrong. That is what the spec is supposed to accomplish. Otherwise, the Examiner, in interpreting claim terms broadly, including terms such as mortgage, which is an instrument of obligation and under some circumstances could have attributes similar to a lease, is just doing their job. If you are relying on common terms of art to distinguish over the art, then by definition, QED, your claims are too broad.

[BigGuy]

Yes, and a hammer, under some circumstances, might have attributes similar to a potato, but they are not the same. You can't interpret "hammer" broadly to mean "potato."

I can't find anything in the MPEP to suggest your "might have similar attributes" test for identity of elements. I do find (e.g., 2131) a requirement that says that an anticipatory reference must show elements identical to those claimed, arranged in the same way. Although the terminology need not be identical, the elements must be.

You can construe mortgage as broadly as you like, but it's still not identical to a lease. It might, under some circumstances, be obvious to substitute a lease for a mortgage, but that's neither a question of identity or broad construction.

I haven't dealt with 3690, but Mr. Boundy's examples ring true to me, given the amazing "broad constructions" that are sometimes asserted in the office actions I receive.

[just wondering]

David Boundy:

You said "3620/3690 observation - I don't think these examiners are evil. They're brave. Most don't have business degrees"

I agree. Maybe to increase productivity and retention the PTO should periodically bring in business professors to teach business basics and terminology to these examiners. My guess is that examiners could each submit a list of topics they want to cover, and these lists could be combined and sent to the "professor" before hand.

Just wondering.

[David Boundy]

Malcolm: "identically the same thing" in a section 102 sense, in a s 102 rejection.

In a mortgage, the owner of the property pays money out. In a lease, the owner of the property receives money in. I suppose you're right, there could theoretically be cases where they're effectively the same thing, but...

CaveMan: a high production environment is exactly the one where you need the most information. When I take over a case from another lawyer, a 20-minute conversation with the old lawyer to get his perspective on what's important, etc. saves me HOURS, even in those cases where I end up totally disagreeing with his/her view and not using it. Do you take over cases from other lawyers? It's HARD if you have no more information than what's on the printed page.

And we fully concur, in 3620/3690, something is badly wrong. I do the same things in 3690/3620 I've done for years everywhere else. In 3620/90, the comprehension level - purely for lack of expertise in the subject matter - is so low that nothing is accomplished in writing.

[Bad Joke Ahead]

Why don't they just require that examiners give the claims their broadest reasonable interpretation in light of the specification?

I guess the problem is that they can't be bothered with reading the specification?

I don't particularly like the taint that a pre-first action "interview" places on the entire process. I think the examiner should just read the application (all of it, or at least some of it), search, and issue an action.

Now, if I drop a 200 page specification with 100 claims on an examiner, and he wants to informally call me and say, "What the --- is this?", well, that changes the situation a bit.

[CliveFenster]

"The claims read on the reference I applied. 102. The attorneys and inventor came in prepared with proposed amendments and ready to discuss the CLAIMS and the reference. All they had to do was change one word and the reference was no good. They were smart enough to figure that out and I agreed with them."

Question: if it had become clear to you during that interview that the attorneys/inventor had NOT appreciated that one word which would change their claims from rejected to allowed ... would you have pointed it out to them?

[JustAnExExmr]

"I don't particularly like the taint that a pre-first action "interview" places on the entire process."

Neither do I. Why is an interview even necessary before prosecution has begun? The only reason I can think that this pilot is being done, is to take more hours away from the examiner, forcing quality to become lower, so Bush/Dudas goons can eventually get their U.S. Patent Registration System. Here is what this pilot will turn into.

Case comes into USPTO

Goes through OIPE

Examiner gets it

Examiner is required within 1 month of case appearing on docket to perform a pre-first action interview search, being able to write off one-hour of official time for this and only with approval from their SPE, whose command of the English language extends to knowing the word "No."

Examiner must then call attorney and schedule a pre-first action interview. The examiner may take one-hour of official time for this and only with the approval of the same SPE and a note from the attorneys doctor verifying they were bodily present in the sacred halls of the USPTO (the corridors with examiner doors closed and 4 SPEs, 3 Directors, 2 T/R QASes and a partridge in a pear tree reading the newspaper in the lunch room).

THEN PROSECUTION BEGINS!

"I think the examiner should just read the application (all of it, or at least some of it), search, and issue an action."

Ding! Good system, not necessarily working now, but that's because of factors other than the system (ridiculous overhead on 2x/3x pair of eyes, too many chiefs not enough indians). Why change the system?

"Now, if I drop a 200 page specification with 100 claims on an examiner, and he wants to informally call me and say, "What the --- is this?", well, that changes the situation a bit.""

You forgot the moving boxes full of prior art ranging from compositions of ice cubes to processes for making semi-conductors to board games.

[curious]

JustAnExExmr -- you are wise beyond your years.

[CaveMan]

If you read the new version of Rule 133, you see that its an end around the ESD that the PTO so desperately wants. They want the applicant to pay the fee, then do the examiner's work for them. Like Pi$$ed off said, the PTO simply needs to stop mucking around posing with the Hershey's kiss and having "pilot programs" and just get back to work examining cases as they are supposed to do.

[CaveMan]

Mr. Boundy, not sure what you mean about a high production environment. My point was that in such an environment there is hardly time to be jawboning about this and that - and contact with the Examiner before a first action has always been forbidden. You can't build any momentum in such an environment unless you become quite adept at moving paper and that includes pulling information off paper (reading) and placing information on paper (writing).

Handholding is a waste of everyone's time and a refuge for the frustrated. Like the examiner above mentioned. If you must have an examiner interview, come in with your ducks in a row, discuss the case in a respectful, polite and civil manner with an idea about the claims at issue and the applied references and make your case. You may not walk out with an agreement, but in most cases, you can walk out with an indication of allowable subject matter in under 30 minutes.

"When I take over a case from another lawyer, a 20-minute conversation with the old lawyer to get his perspective on what's important, etc. saves me HOURS, even in those cases where I end up totally disagreeing with his/her view and not using it. Do you take over cases from other lawyers? It's HARD if you have no more information than what's on the printed page."

Sorry Mr. Boundy, but if I take over a case from another lawyer, I always assume that the other lawyer didn't know spit about what they were doing (in most cases that's why the file wound up getting transferred to me). I usually like to do things my own way anyway. I am one of those rare people that gets a new file and actually reads it. And I don't find it that hard to take over a case. I just read the file, figure out where it is in prosecution, figure out what went wrong if anything and decide what the next action should be to conclude prosecution as rapidly as possible. The kind of cases you are talking about (greater than two inches thick not counting references), IMHO, are usually dogs and won't be worth a hill of beans anyway due to the lengthy file history that is chock full of estoppel. But, of course, some attorneys see those type of cases as a gravy train. Personally, I see fewer and fewer of those types of cases because clients are getting wise.

All due respect, there is a need to interact with others that is literally screaming forth from your writing. I have always found that, where prosecution is concerned, limiting my interaction with others is always a benefit, aside from the occasional interview or client call. Perhaps you might consider augmenting your practice with a livelier social life.

[cooled off random.examiner]

Clive Fenster @ 5:59

"Question: if it had become clear to you during that interview that the attorneys/inventor had NOT appreciated that one word which would change their claims from rejected to allowed ... would you have pointed it out to them?"

It depends. Here is my take, bits and pieces of which are repeats of what others (Caveman, JAEE) have said above: Its Applicants burden to claim the invention. I didn't make that up. Congress did. 35 USC 112, P2. In my particular example (which you will understand I must be discreet about), the pile of "best prior art" at my command was a manageable one. Thus, conceivably I could have made A suggestion to get them off of this one reference. Here's why I dont think that is necessarily the examiners job (and spare me the cites to the MPEP about suggesting allowable subject matter, I know about them). In my hypo, changing one word would have done it, but so would adding an entirely different limitation to claim 1. Who's judgment call is that? The applicants and their attorneys. Those claims were drafted with infringement, licensing, whatever in mind by people that know way more about their business (like the dollars and cents stuff) and their competitors than I do. Let them figure it out, do the Festo calculus, etc etc.

Furthermore, 102 is a big universe. You do the best you can to navigate it the first time. Sometimes though, you find something the second time around that you didn't see the first time. I dont want to be in the position where I suggest something that I ultimately reject. I have a pretty good idea of what is out there, but I am surprised daily at what I pull up in the NPL or older patent literature.

My style of writing (maybe not my message board prose MM), but at least my office actions let the applicant know what my position is. In my example, the words were the same, except in the pending case, they didn't mean what the reference implied. It was pretty cut and dry.

I just dont like this concept of talking about the "invention." The claims are the invention. Caveman got it right.

I'll talk to attorneys to about claims. When things get mushy and we talk about stuff that has absolutely no relevance, I get pissed off. I had one guy argue unexpected results on an anticipation rejection. Seriously. This is the crap I'm talking about. Please, make more process arguments for your product claims . . . argue some more stuff not present in the claim . . .

I'm out.

[e#6k]

How do you know the attorney prosecuting the application is the person who wrote the app, or MADE THE APP, in your parlance?
You don't.
Do yourself, and all of us a favor, and stop pretending that you know anything about what goes on between applicants and their counsel.
____

Hmmm VA, maybe because he told me, "when I wrote this application 2 years ago..." I got the impression that he wrote the application. I know more about your prosecution than you think I do. I've been paying attention. So do us all a favor and shut your but t sore hole ok?

As to your laudable "ethics" yes, I believe there are ways, that should likely be implemented, to restrain attorney's from presenting bs to me as if it's legitimate.

[Clive Fenster]

cooled off random.examiner, thanks for the reply. You may wish to note that not every poster on this site asks a question with a knife hidden behind his back. My apologies if my post came across as challenging or snarky.

In my case, I tend to view the process as collaborative, not adversarial. In my little world, I also expect the attorney (and I can control only myself in this department) to act just as candidly and collaboratively.

I'm not looking for the examiner to write/amend my claims for me, but neither do I expect him to hide the ball or play dumb. When the examiner has read my application and claims, understands what I *can* claim, and knows precisely where my key lies that will unlock his rejection ... well, in my little world, he taps his finger on it and winks, figuratively speaking.

[phishy823]

Reading claims as broadly as possible in light of the specification does not always/ever lead to the issuance of a valid patent. If the claim is to a particular known class of dyes, but the specification only only a particular dye of this class having a particular new modification which causes this dye to exhibit unexpected properties...then why isn't this particular dye claimed in an independent claim to begin with? Claiming the whole class of dyes seems silly. I understand that the goal is to obtain a patent having the broadest coverage...but isn't the goal also to obtain a valid patent? If attorneys do not want examiners to apply extraneous art..then why don't they claim the invention in a more realistic manner?

[phishy823]

Reading claims as broadly as possible in light of the specification does not always/ever lead to the issuance of a valid patent. If the claim is to a particular known class of dyes, but the specification only only a particular dye of this class having a particular new modification which causes this dye to exhibit unexpected properties...then why isn't this particular dye claimed in an independent claim to begin with? Claiming the whole class of dyes seems silly. I understand that the goal is to obtain a patent having the broadest coverage...but isn't the goal also to obtain a valid patent? If attorneys do not want examiners to apply extraneous art..then why don't they claim the invention in a more realistic manner?

[Midwest Practioner]

First office actions have become almost unbearable in some art units due to the excessive restriction requirements being dictated by the Office. During the last year or so, we have received numerous first and second office actions that are purely restriction requirements, typically the first restricting out methods from devices/assemblies, and the second then restricting out the varying or alternative claiming of the invention based on features claimed in the dependent claims. One recent example was fairly simple application with 24 total claims with 4 independent claims. We received the typical method/device restriction where we elected the device and withdrew the 5 method claims, so we only had 3 independent and 19 total claims. The very next office action was a 13-way restriction on the 19 claims based on the examiner's view under Sec 121 that essentially each and every feature introduced or alternatively claimed in a dependent claim was a separately patentable "subcombination" without ever searching or examining the independent claims. What a joke. In the interview, this primary examiner responded that if he did not issue this type of restriction, he would be reprimanded by his art unit management. Also that he was doing the applicant a favor as having so many restriction, under the new rules he could file more continuations. Gag. What a waste of time and money. No wonder the PTO has such a backlog; they issue numerous office actions and delay examination on the merits. If this is the way they are going, the pre-examination interview may be helpful, but I doubt it.

I would be interested if others have also seen the significant increase in unreasonable restriction practice by the Office during the last couple of years.

[CliveFenster]

"I would be interested if others have also seen the significant increase in unreasonable restriction practice by the Office during the last couple of years."

Most of my cases are in 1600/1700 and don't evidence that. Infrequently, I have applications routed to other units; 3700 seems to do it at least half the time.

[JustAnExExmr]

Posted by: Midwest Practioner | Apr 18, 2008 at 11:34 AM

"Gag. What a waste of time and money. No wonder the PTO has such a backlog; they issue numerous office actions and delay examination on the merits. If this is the way they are going, the pre-examination interview may be helpful, but I doubt it."

They are just passing the buck onto the applicant, as their time for examination hasn't been adjusted in three decades.

Talk to your representatives in Congress. They are the only ones who can do anything about it. I hear they are very concerned with Patent Reform.

[Midwest Practioner]

I understand the issue with examiner time and performance requirements, but Congress is not the entity to fix this. The PTO is responsible for managing examiner time and effort and has recently been given the ability to retain patent fees to pay for its operations. The PTO, just like any company, needs to review its performance criteria for its employees in view of the business challeges it faces and to adjust accordingly. This is not for Congress. The PTO shifts the blame for their poor management, accepts none of it or the result, e.g, the growing back log, and attempts to change the rules of patentability as a bandaid for their inability to manage their resources. Most of us would be more open to patent reform if the PTO would first fix their internal practices.

In this case, their increasing use of restriction practice, in my view, is just another attempt at instigating administrative rules that are in reality substantive. Their "interpreting" of the restriction practice rules is one place where there are few if any avenues for an applicant to question or successfully argue against or appeal their interpretation.

[anon]

"Pi$$ed off, when, or should I say if, you make it into private practice, your conversion is going to be painful. Short, but painful."

Vet, can you please explain why making the transition from Examiner to (private practice) patent attorney is a "painful" experience. Thanks.

[pds]

"Vet, can you please explain why making the transition from Examiner to (private practice) patent attorney is a 'painful' experience."

Since I have seen this transition take place before, I'll take a crack at it. Of course, this all depends upon where in private practice one lands. However, for purposes of this discussion, I'll assume that one lands at a firm where they know what they are doing.

First pain ... EVERYTHING you write is reviewed. The horrendous spelling and grammar errors that litter a large percentage of OAs won't be tolerated. You either improve your spelling/grammar quickly or you find yourself rewriting everything multiple times.

Second pain ... you are expected to KNOW the law and not flaunt it. Showing ignorance of law is a terrible way to make a first impression. You either get up to speed really quickly or are relegated to document review with the 1st year litigators.

Third pain ... errors are not tolerated. Screwing up costs the firm money, and big screwups (e.g., missing statutory bar dates) can cost the firm serious money.

Fourth pain ... clients are treated with kid gloves. Treating a client poorly is a surefire way to get shown the door.

Fifth pain ... losing the mindset that all inventions are anticipated/obvious -- you just haven't found the prior art yet. This is the classic problem with bringing in former examiners -- they think nothing is patentable.

Sixth pain ... conclusions need to be based upon analysis. This is something many 1st year attorneys have a problem with.

Most of the pain comes from ditching all the habits that made working at the PTO bearable. There are other things that make going into private practice painful. For example, the hours is one, which is partially offset by the pay.

Of course, you can find yourself at one of the many "so-so" law firms out there. In this case, you may be able to get by with "so-so" work.

[Veteran Attorney]

It would be hard for me to improve on pds's response. But I'll try. :-)

The whole "clack away on the keyboard, hit the print button, and immediately sign whatver rolls off the printer" culture that pervades the PTO simply does not fly in private practice.

And whey Pi$$ed off see's the garbage flowing out of the PTO, he/she will understand that.

Another thing, in private practice, due dates are due dates. None of this "well, you get to the end of the bi-week. And really until noon, or maybe 5:00 PM on the next count Monday, and if you miss that, it's negative one workflow point."

One more thing, pds is also correct on everything you write actually being read. There won't be anymore of this "well, it looks like everything's rejected and nothing's allowed, so I'll sign it" for Pi$$ed off. In private practice, the review will be "is it correct, factually and legally?" and if it's not, do it again.

[anon]

"First pain ... EVERYTHING you write is reviewed. The horrendous spelling and grammar errors that litter a large percentage of OAs won't be tolerated. You either improve your spelling/grammar quickly or you find yourself rewriting everything multiple times."

Agreed - - there's absolutely no excuse for these sorts of errors when clients are paying the attoreny $$$$/hour. But, as an Examiner, I often see responses with their fair share of mistakes, misspellings, etc (maybe these are all sent in by former Examiners who just haven't broken the habit?).

"Second pain ... you are expected to KNOW the law and not flaunt it. Showing ignorance of law is a terrible way to make a first impression. You either get up to speed really quickly or are relegated to document review with the 1st year litigators."

Presumably, a JD examiner "knows the law" as evidenced by having obtained a law degree and passing the state bar.

"Third pain ... errors are not tolerated. Screwing up costs the firm money, and big screwups (e.g., missing statutory bar dates) can cost the firm serious money."

As previously explained by Vet in another topic discussion, missing a filing deadline is a "clerical" issue not a "legal" issue. A good docketing system with a good back-up docketing system should take care of this. It's also the reason why attorneys have malpractice insurance.

"Fourth pain ... clients are treated with kid gloves. Treating a client poorly is a surefire way to get shown the door."

And JD examiners are known to routinely treat clients poorly??

"Fifth pain ... losing the mindset that all inventions are anticipated/obvious -- you just haven't found the prior art yet. This is the classic problem with bringing in former examiners -- they think nothing is patentable."

Huge misconception and generalization there, especially for JD examiners - - i.e. not all of us molded in the form of e#6k.

"Sixth pain ... conclusions need to be based upon analysis. This is something many 1st year attorneys have a problem with."

I guess this wouldn't be any different for JD examiners versus other 1st years who have no examining experience.

[Just an ordinary inventor(TM)]

Dear pds,

Far be it from me, JAOI, to be argumentative (o¿õ), but I feel compelled to mention that, not too many years ago, I remember that most Office Actions that I read in my pending applications were flawless, written by true Examiner professionals who obviously took great pride in their work.

Those Were the Days My Friends …

http://www.youtube.com/watch?v=X5pkkAhETYg
http://www.youtube.com/watch?v=UrVX8qC_PQ0&feature=related

[pds]

Presumably, a JD examiner "knows the law" as evidenced by having obtained a law degree and passing the state bar.

I am unaware of any state bars testing for patent law.

"As previously explained by Vet in another topic discussion, missing a filing deadline is a "clerical" issue not a "legal" issue. A good docketing system with a good back-up docketing system should take care of this. It's also the reason why attorneys have malpractice insurance."
It is a clerical error. However, identifying when a bar date exists is not.

"And JD examiners are known to routinely treat clients poorly??"
Examiner are known for treating their clients with contempt. If they were not, I probably would never have had a reason to find and actively participate in this blog.

"not all of us molded in the form of e#6k."
For all of our sanity, I hope not. But this is one that JD examiners I have talked to admit to.

In private practice, because you are getting paid much more, the stakes are higher and the forgiveness of errors is much less. Some can adapt quickly, others cannot.

[curious]

>

they also need experience and training in identifying what is or at least may be patentable

[anon]

"I am unaware of any state bars testing for patent law."

Patent law is not static - - hello? Did you learn about KSR in law school? Point being that anyone with the intelligence and skills necessary to graduate law school and pass the bar is well equipped to be able to read decisions of the Federal Circuit and Supreme Court and discern the legal rule. Why would this be any different for a newbie attorney or one that has been practicing for 30+ years???

[anon]

"they also need experience and training in identifying what is or at least may be patentable"

Have any of you attorneys honestly ever told a client "Nope, sorry, I don't think you have anything patentable here"? I doubt it. The bar for patentability, even after KSR, is still pretty low. The big question oftentimes is not whether something is patentable or not, but rather (1) what scope of protection can the client reasonably expect to secure with a patent in view of what already exists in the prior art and (2) whether such (perhaps narrow) scope is worth the high cost of obtaining a patent.

[Just an ordinary inventor(TM)]

Those Were the Days My Friends … a little history

http://www.youtube.com/watch?v=lNVit7cesj8&feature=related

A little religion for this week’s historic Christian celebration …

http://www.youtube.com/watch?v=rrMskO_HOJA&feature=related

[pds]

"Why would this be any different for a newbie attorney or one that has been practicing for 30+ years???"

Because newbie attorneys haven't been spoon fed (in part) horrendous interpretations of patent case law since the day they started working in the field of patents (unlike JD examiners). Newbie attorneys do not have to be untaught before being taught. Most case law that I see cited by examiners isn't even close to being properly applied. Most examiner do not even both to read the case before they cite it.

The problem with examiners with JDs is that they have so many bad habits that first have to be broken. Change is painful. However, either the new attorney (who was once an examiner) changes and changes quickly, or they find themselves looking for a new job. Granted, he or she may last 1-2 years at their first job before being shown the door, but the impressions that are made the first month or two are what will make or break that attorney's career at the firm.

[anon]

"Because newbie attorneys haven't been spoon fed (in part) horrendous interpretations of patent case law since the day they started working in the field of patents (unlike JD examiners)."

So I suppose JD examiners are incapable of reading a case and thinking on their own the same way your newbie (non-Examiner) attorneys have to be "taught" what the law is because they are incapable of reading a case for themselves and discerning the holding of the court? Who "teaches" you the law? Or are you the only attorney in your firm qualified to say what the law is or is not on a particular issue of patent law?

"The problem with examiners with JDs is that they have so many bad habits that first have to be broken. Change is painful. However, either the new attorney (who was once an examiner) changes and changes quickly, or they find themselves looking for a new job."

Unless you have specific examples these pervasive "bad habits" of former examiners, please stop talking out of your a$$.

[GP]

We had one former examiner come to our firm.

Worse yet, he had a PhD.

What a nightmare.

He comes in swinging the big PhD around like it's some kinduv badge of nobility.

So every time I send something back to the guy with edits/comments, he wants to argue.

I mean every point.

He's arguing for bad grammar. He's arguing why this needs to be that.

Better yet, he thinks that being a former Examiner should impress us.

Little does he know.

So after about 4 months I go in and tell the head of the IP dept that I'm getting close to the point of not working with the guy.

I suppose the head of IP had a talk with him in which he pretty much said . . .

1) You don't know s--t.
2) This guy Gideon Pope is hot s--t who writes very well.
3) If you want to make it in this business, stop talking at him and start listening.
4) Your PhD is worthless here except to the extent it impresses unsophisticated clients.
5) The fact that you're an ex-examiner works against you, because that means everybody is starting from the assumption that you're an idi0t.

I overheard this guy giving his PTO wisdom to another clerk one day. He says, I s--t you not, "written description and enablement are the same thing."

I grabbed him and the other newb, said, "you ain't in Kansas anymore there fella," and gave them the patented GP lecture on how WD and enablement differ.

Anyway, a few days after I lodged my concern, the guy pulls a 180 on me and ended up being great to work with.

He also overcame all of the PTO brainwashing in about 1 year. All it took was a string of about 5 lousy office actions in a row and he was on board.

Not bad.

[pds]

I'm sorry to break it to you, but most examiners are clueless when it comes to applying the law.

6K is a classic example of the saying about having a little knowledge is dangerous.

If you seriously think that your examiner bretheren cite law properly on a consistent basis, then you are delusional. As it turns out, I found this while I was browsing BPAI decisions a couple days ago.

The following case law was presented in the decision:
Where the difference between the claimed invention and the prior art involves a range, applicant must show that the particular range is critical, generally, by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).

This involves case law I have a particular familiarity with, and I know that this case law, which was cited by the BPAI, is just plain WRONG.

In any case, as discussed above, “[t]he law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims.” Woodruff, 919 F.2d at 1578 (citations omitted). “[I]n such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” Id.

However, if the ranges do not overlap, there are additional findings needed to be made by the examiner. The examiner may assert that it would have been obvious to optimize to one having ordinary skill in the art only AFTER establishing that the variable is a result-effective, art-recognized, variable (see discussion in Section II).

AFTER a prima facie case of obviousness has been made, an applicant may rebut by showing unexpected results (see Section III). However, the case law cited by the Board has been misapplied. The "situation" being referred to in Woodruff is NOT that there is a difference based upon some range or other variable, the "situation" being referred to is that a prima facie case has been made. By mis-citing this case law, the Board has erroneously placed the burden on applicants to show unexpected results without first requiring that the examiner establish that the claimed variable is an art-recognized, result-effective variable.

I've seen this same error made by examiners well over two dozen times. In this case, it was made by a member of the Board who was probably taught the wrong way when he/she first became an examiner. Eventually, when the examiner made it to the Board, the examiner (now Board member) has an improper understanding of the law.

As this happens with the Board (more frequently than I like), the notion that it happens with examiners at a much higher frequency shouldn't be that surprising.

[pds]

BTW ... my last post involved 2 citations from 2 different BPAI decisions, they immediately precede and follow my statement that "... is just plain WRONG."

[anon]

"I'm sorry to break it to you, but most examiners are clueless when it comes to applying the law. 6K is a classic example of the saying about having a little knowledge is dangerous."

The previous discussion was about JD examiners, not examiners in general. I'm not going to argue that non-JD examiners do not misapply the law.

"In this case, it was made by a member of the Board who was probably taught the wrong way when he/she first became an examiner. Eventually, when the examiner made it to the Board, the examiner (now Board member) has an improper understanding of the law."

A significant number of APJs on the BPAI actually were hired from OUTSIDE the PTO. In any event, if your position is that the BPAI misapplied the law, then take your argument to the Federal Circuit and let them decide. There are many on this board that would argue that even the Supreme Court "misapplied" the law in KSR.

[pds]

You don't get it, do you?

The problem with examiners (JD or not) is the inherent bias they obtain while at the patent office. Combine this bias with working in an environment where quantity is valued over quantity and receiving poor guidance as to what the law is, and the average JD examiner coming into private practice has a lot of baggage that needs to be shed (and quickly).

As for my example, why would I care to take my argument to the Federal Circuit? I made it perfectly clear that I found the cites while browsing the decisions. As such, the case isn't mine.

Now a sharp attorney, while engaged in some argument, would have immediately investigated whether or not my position was wrong or whether the BPAI got it right. Either you did, realized that I was right, and said nothing, or you didn't even bother to check the case law.

If you want some other examples

95+% of inherency arguments do not meet the requirements set forth by case law.
95+% of obviousness-type double patenting rejections don't meet the requirements of the law.

My last comments on this matter .... If you plan on going into private practice after being an examiner and having a JD, realize that you WILL be looked at with a suspicious eye. Don't blame me -- it is what it is.

My suggestion to you is don't wait too long before heading out. The longer you stay at the USPTO, the harder it will be for you to lose your bad habits. BTW: don't think this problem is just with the USPTO. You can pick up bad habits by working with sloppy attorneys.

[Lowly Prosecutor]

"Have any of you attorneys honestly ever told a client "Nope, sorry, I don't think you have anything patentable here?""

Yes, twice, with a big client. I backed up my position with dead on 102 art. The client thanked me profusely, then sent us about 25 more invention disclosures. It's proper business, and proper lawyering, to inform your client when they have nothing.

[e#6k]

Fifth pain ... losing the mindset that all inventions are anticipated/obvious -- you just haven't found the prior art yet. This is the classic problem with bringing in former examiners -- they think nothing is patentable.

PDS, as you are no doubt aware, even those examiners know good and well that just because they know something is a steaming pile (and they haven't found the art yet) doesn't mean that they think it's not patentable. They know good and well they could push it through, and then give the inventor a nice big ol fat bill for a failed litigation years later. That my friends, that is good attorney service. Right?

"I would be interested if others have also seen the significant increase in unreasonable restriction practice by the Office during the last couple of years"

I would be interested if others have also seen the significant increase in unreasonable claims by practicioners during the last couple of years. Hmmm, strangely enough, DC reported on that very thing not long ago. Your feelings of self-entitlement to ~20 claims speaks volumes. Learn to not make a mess of things, claim your invention, save me the trouble of restricting you 5 ways til sunday. Trust me, if I could just pick up applications NOT needing restricting and just examine I would be a much happier man. Instead it goes something like this:

1. Read claims.
2. Do they need to be restricted?
3. Read some spec.
4. Determine if they need restricted.
5. Wish I got 2-3 hours for writting up this lame pile o' called a restriction because it took me that long to separate out all the stuff he jammed into one app + read it. Don't even get me started on calling them up about a restriction.

"The problem with examiners (JD or not) is the inherent bias they obtain while at the patent office."

I.e. nobody was there (as there are people in lawschool) to tell them that night is day, or, more specifically, that night is a part of day (etc. etc. fill in bs here). Amirite? You just don't get it pds, you and your fellows are the ones who are inherently biased, examiners have their feet rooted (in many of the instances you attempt to charge them with wrong-doing) in reality, as opposed to "legal" reality. You don't seem to understand that the "normal" people of this world are the non-lawyers and the lawyers are, you guessed it, the exception to standard issue "reason" that humans come with. Far be it from me to say that such a thing is "bad", but none the less there it is.

"95+% of inherency arguments do not meet the requirements set forth by case law.
95+% of obviousness-type double patenting rejections don't meet the requirements of the law."

That's funny, I'm yet to be called out on either one anywhere near Even 50% of the time. Probably closer to 5. So, I guess your percentages just need to be turned around. 5% of inherency, 5% of obviousness etc. But then again, maybe we can just all assume I'm awesomesauce or completely lying (hah).

Most of the examiners I know, and myself definitely included, can see the attorney's arguments a mile away, and in fact set them up with conspicuous wording. It's not rocket science to find the "flaws" in the prior art, or a combination and send it back to the examiner. Far from it.

"Yes, twice, with a big client. I backed up my position with dead on 102 art. The client thanked me profusely, then sent us about 25 more invention disclosures. It's proper business, and proper lawyering, to inform your client when they have nothing. "

^This guy should be all of yours hero.

[Veteran Attorney]

"But then again, maybe we can just all assume I'm awesomesauce or completely lying."

I'll go with the latter.

Though it's hard to tell with you. If you actually believe your delusional rantings, I guess it can't be said that you're lying. But it is so hard for those of us who are rational to actually believe that you actually believe even half of your rants. :-)

[curious]

e#6k

>

Would you prefer that applicants file five separate applications?

[JohnDarling]

"Don't even get me started on calling them up about a restriction."

So you don't follow the usual practice of calling my firm's general reception number at 4:00 AM on a Sunday, and then punching up the old form paragraph about "a telephone call was made but did not result in an election"?

Good for you!

[anonymous]

"I'm yet to be called out on either one anywhere near Even 50% of the time. Probably closer to 5."

It's hardly a good gauge to look at how many times applicants call you on it. There are several reasons why they don't. First, as to inherency, they know that you'll just find a reference with the non-inherent feature and give them a knee-jerk obviousness rejection. Second, as to double-patenting, many times it's in view of a related application and the patent was going to lose the term anyway, so why not terminally disclaim? Third, in view of the first two reasons and low-per-office-action budgets, no patent attorney would want to waste time on calling you out.

By the way, low-per-office-action budgets (both for applicants' attorneys and for USPTO examiners) are an underlying cause of much of the problems we see in backlog. When applicants and examiners don't have the time to fully consider the art, it's no wonder that much of prosecution advances at a snail's pace.

[e#6k]

JD- I had thought about it but my hand hasn't been forced just yet. That said, it's far from out of the question. Why? Well, if you're not aware yet they're doing that so they can take the hour. We're technically not supposed to claim Any othertime if we call you for the election. Apparently the production sys's logic goes like this: If the examiner calls them and gets an election it didn't take them an hour to perform the restriction, because most of the hour we were previously giving them was the act of printing out the page (and presumably putting it in a folder which with Ered we don't even have to do) they spent time creating. Nevermind that the calling takes 10 minutes half the time. Now, obviously it takes about a minute to print out a page, and around an hour or more to make the determinations, find the classifications, read the spec etc. (god forbid trying to contact someone in another TC about something) but apparently that somehow doesn't factor in to the othertime consideration. So the next time you get a call on Sun with that FP in the OA, remember, that examiner likely just did 8 restrictions, which is presumably 8 hours of work (minimum, on avg), but if you give him an election on the phone the 8 hours of work magically disappears. So, since we now do it that way, we essentially do an extra count per month (or mo+1/2) unless we pull some afterhours calls.

curious- if they're two+ blatantly different species or separate inventions.

[e#6k]

"First, as to inherency, they know that you'll just find a reference with the non-inherent feature and give them a knee-jerk obviousness rejection. "

So you're saying the feature isn't "inherent" but it's so blatantly obvious that they don't fool with it. Could be. I would give you that one except most of my inherencies really are inherent otherwise I just give them the ol' 103.

As to the budget problems yes, I have to agree, obviously that's a reason. The question is, what do we do about that? I say we up the charges and fees until some of the crappier apps are not worth them filing, but you're still making bank and I'm having time to consider the case. What's not to love? We're dealing with higher quality material that's easier to prosecute from both sides perspectives and we're putting more time into them. Seems like a win/win.

[JohnDarling]

"Well, if you're not aware yet they're doing that so they can take the hour."

I'm aware.

You're operating under basically the same PAP that I operated under for 9 years. Despite all the outcry from the examining corps, including you, about how different everything is now in this modern day and age of ours, it's still the same old game the production system tactics from the examiners.

[JohnDarling]

"Well, if you're not aware yet they're doing that so they can take the hour."

I'm aware.

You're operating under basically the same PAP that I operated under for 9 years. Despite all the outcry from the examining corps, including you, about how different everything is now in this modern day and age of ours, it's still the same old game the production system tactics from the examiners.

[JustAnExExmr]

Posted by: JohnDarling | Apr 22, 2008 at 08:53 AM

"You're operating under basically the same PAP that I operated under for 9 years. Despite all the outcry from the examining corps, including you, about how different everything is now in this modern day and age of ours, it's still the same old game the production system tactics from the examiners."

The "game" is still the same, but it keeps getting more difficult with each passing year. I left the USPTO after you. In the years since I've been gone, it has become increasingly difficult to play the "game". Why? One reason is that additional duties are piled on while no time is given to do them. Apparently, PTOmgmt is under the assumption that each day has an infinite amount of time in it. Several other reasons are the increase in the complexity of cases, the length of cases/claims, the number of claims, and the number of horribly written claims (which despite anything else said about the GSK case, the USPTO did have it right that one poorly written, jumbo case takes a disproportionate amount of an Examiner's time). A final reason is that when you started at the USPTO, and even when I did, there were veterans in just about every art unit. Good luck now new Examiners. We still have four quarters. They just aren't 15 minutes anymore, they are 10 minutes. And the other team starts off with 3 touchdowns.