Esther Kepplinger at Wilson Sonsini generated the data for the graphs above. They show that RCE filings have dramatically increased over the past decade. (Note that Kepplinger included CPA’s in the RCE numbers).
Esther Kepplinger at Wilson Sonsini generated the data for the graphs above. They show that RCE filings have dramatically increased over the past decade. (Note that Kepplinger included CPA’s in the RCE numbers).
“RCE filing rates increased as PTO allowance rates decreased.”
That’s because, every time you file a RCE, the PTO considers the RCE a new application and adds a +1 to it’s list of applications that were never allowed.
While allowance rates are dropping, they are still much higher than the official numbers from the PTO.
“The PTO has made it much more difficult to obtain allowance of claims which just a few years before would be allowed; and the reaction of practitioners was to file RCE’s to try again to get the claims allowed, perhaps by making minor claim revisions and/or by presenting different and/or more extensive supporting arguments.”
I disagree. Examination quality has gone down. Due to this and examiners gaming the system for counts, practitioners typically have to file RCE’s just to get the action that SHOULD have been the FOAM.
Unless I’m dealing with a primary, half of the time I don’t even know what the position of the examiner will really be until I file the RCE and get the real search performed.
RCE filing rates increased as PTO allowance rates decreased. No one should be surprised. Practitioners are not trying to “game” the system, just trying to best represent their clients in view of changing PTO practices and new decisions from the courts.
link to patentlyo.com
Fun and games.
I file a lot of RCEs. Some times we didn’t get the initial claims right the first time around. And, indeed, every once in awhile will find a case where a dummy claim was filed for a rush continuation before issue of the parent case, and a preliminary amdt wasn’t filed in time.
But most of the time, it involves final rejections that shouldn’t be finals. Also, the standard policy for several of our larger clients is to try an amendment after final to clean up the claims for appeal, but most of those are rejected, so just file the cleaned up claims as an RCE, and then if not allowed, appeal. A surprising number of our RCEs are allowed on the first office action after the RCE after having the after final amendment rejected.
I know and respect Prof. Lemley, but cannot help but wonder if he fully realized the gamesmanship going on with RCEs, primarily on the part of the examining corps, but also on the part of some practitioners. He is measuring something, but I suspect he isn’t measuring what he thinks he is.
justagEEk — that would be an interesting/informative graph.
The PTO has made it much more difficult to obtain allowance of claims which just a few years before would be allowed; and the reaction of practitioners was to file RCE’s to try again to get the claims allowed, perhaps by making minor claim revisions and/or by presenting different and/or more extensive supporting arguments. Now in view of KSR and the recognition of new PTO patentability standards, many patent practitioners are not pursuing the broader claims and so allowance rates are increasing. RCE and continuation filings probably would have decreased last year had it not been for the threat of the PTO’s proposed rule changes. It will take awhile for those RCE’s and continuations to work their way through the PTO, but that was a self-inflicted wound.
If the PTO can use better managerial techniques to increase the examiner retention rate and to provide the examiners with improved and additional searching tool, the backlog will slowly decrease IMO.
Wonder what would happen if you overlay allowance rates on this data.
There have been rare times I’ve presented claims directed to a competitor’s product in a continuation. The claims were supported by the disclosure … else I wouldn’t have drafted them that way or filed them. Typically, the competing product is merely an embodiment of what is disclosed in my client’s application, not some new evolution over it. Technically, sure, the inventor hasn’t considered every last potential embodiment, so he hasn’t considered the one that the competitor put out. But if that competing product is fairly described in the spec such that claims properly can be presented in a continuation, then there is absolutely nothing unethical about so presenting them.
Interesting approach some have to this discussion. Take the posted RCE trend, cast continuations with claims drawn to competing goods as the demon (as if that’s the problem, rather than the RCE as a means to continue the fight toward allowance), strongly imply that the great majority of attorneys are knowingly unethical (with no supporting evidence and in disregard of not one but two different disciplinary codes waiting to punish the bad actor), and mock anyone who disagrees and says he’s honest/diligent. It must be an election year.
Query, I regret to inform you that I don’t know of any blogs where you can slag off the European patent system. I don’t even know of any where Europeans can slag off the European system. So, there’s a gap in the market. Dennis spotted it many years ago. Occasionally he posts items on European aspects, and contributers duly slag off the European system. If you want more such items, why not suggest it to Dennis. Your criticisms of the European system I will read with great interest (like M Mooney’s yesterday, on “technical”, in another thread). Meanwhile, if I may, I will continue blogging. The responses to my comments I often find valuably educational. That’s why I do it.
Mooney, I told you to stop using my name. And stop calling me all the time. I don’t want to see you anymore.
Every time I think about whether to file an RCE or not, I like to err on the side of filing an RCE because of my innate greed and my underlying desire to do a disservice to my client. But then that is just the type of person and patent attorney I am, edstirling.
Max
Are there any European weblogs where we Americans can post our comments on the deficiencies of the European system?
Dear RCEsFuelTrolls:
Do litigators have any responsibility for the high cost of today’s patent litigation?
Eye, I confess, I have no experience with expert witnesses in US patent trials, only with the way the English court 1) hears technical experts in patent trials and then 2) reaches a decision. There’s one judge and no jury. The judge has a science or engineering background, and was a patent trial advocate for many years, before he took up judging. The expert’s task is to help the court to put on the mantle of the PHOSITA. I suppose all this is a million miles away from a patent trial in the USA, with a jury deciding on the facts. Not sure your medical malpractice idea helps us here. Professionals can see the problems their fellow professionals face (There but for the grace…..go I). So, if a technical expert were to be accused of malpractice, I also wouldn’t have much confidence in a bunch of patent trial technical experts filling the jury bench. But if the patent case is about “chemistry”, the finder of fact ought to know what “chemistry” means, no?
I guess you are being sarcastic Max. I also guess you don’t have a lot of experience dealing with “experts.” The other problem with professional “experts,” is that once they have weighed in on one matter, they become sort of a lesser tribunal of their own. If the jury pool is a limited universe of “experts” sooner or later they will encounter a situation where they will be in a position to contradict themselves somehow. With a lay jury selected from a deep pool, you don’t have that problem.
You brain surgery analogy is poor. Its like suggesting that I said a lay person should prepare the application. I said no such thing. But I can guarantee you that if I was a plaintiffs attorney in a medical malpractice case I would not want a bunch of doctors in my jury pool.
“This is about greed. RCE = easy money for practitioners and examiners alike. Nobody is ever “forced to file an RCE”.”
I don’t charge extra for a RCE. I charge what I would for any response.
This is about greed. RCE = easy money for practitioners and examiners alike. Nobody is ever “forced to file an RCE”.
Great comment, Eye. A jury with some inkling of the technical content of the case will be harder to “work with”, you write, so best fill the jury bench with “regular” people who know nothing. And, anyway, they will do the job better because they think(?) outside the box and see something the experts don’t see. Do I take it that, when you need heart surgery, you will be dismissing the “technically trained” surgeon, and asking instead for a regular person to do the surgery, because that person might see a key thing, that the surgeon doesn’t. Is that your point? Or is it that patent litigants can make do with regular juries but, for your own case, you want the best “technically trained” expert you can get?
Fuel,
the problem is that as the jury gets smarter, they become harder to work with, more susceptible to influence, and more subject to their own technical or political biases, such as an angry computer professional with a bug up their bu tt about Microsoft. I, for one, never underestimate the ability for “regular” people, not only to fathom complex technology (subject to the ability of the attorney to simplify it without making it too simple), but to add some outside-the-box wisdom that would be impossible with a technically trained jury.
“who discloses an inoperable invention?”
Who asks such a naive question? Did an adult capable of typing actually ask that question??? The pollyanna’s around here really make me want to puke.
and max, you are such a square! ha ha
e6k, it was real. a real mutha. i hear you bro, I am older and more jaded, but was where you are now dude and all i have to say is, for those about to work out, i salute you!
MaxDrei, when the “wheels of justice” turn slowly, stupidly, and without tether to the realities of the practice, lawyers tend to make a lot more money. Other than that noble cause, I can think of no good reason for supporting the present continuation practice which can yield such ridiculous and unfair results.
I’ll readily admit my bias as a litigator — although I’ve represented both patent holders and alleged infringers — but the sooner the prosecution bar stops blaming examiners for every fault in the system and starts taking a share of the responsibility, the better off everyone — including our clients — will be.
I’m deeply impressed, Fuel, that you are an experienced US patent attorney. I am bound to conclude that there are hundreds more US patent attorneys out there, with views like yours. I had no idea. Normally, they keep such provocative thoughts to themselves. Anonymous blogs do have their uses.
MaxDrei, I don’t know what you’re getting at, but I’m quite American, I assure you.
Hank,
“If you’re upset that the PTO is doing a miserable job, especially when it comes to reviewing continuations for written description and enablement, take a number and get in line.”
I’m not saying that the PTO is guiltless in this mess, but it defies reason to lay 100% of the blame at the feet of the examiners. You know very well how the sausage is made, and perhaps these continuations might hew closer to the spec if the prosecutor spent ten more minutes explaining to the client how over-aggressive claiming can risk 112 problems. But then, the prosecutor has little reason to worry about her client getting caught, since so few patents are invalidated on 112, so why spend time in your budget that could be used for other tasks. Sure, that voice in your head may be telling you, as you read the spec, that these claims don’t seem to match up very well, but ignore it — it’s the examiner’s job, and if it gets past the examiner it just means you did a really good job, right?
“And there’s certainly no patent that is so clear that a tricky defense attorney, like you perhaps, can’t gin up some thoroughly phony inequitable conduct charge either.”
I can’t speak for others, but I’ve only had one case where we asserted inequitable conduct. We may have suspected it in others, but good-faith is as much a requisite element of pleadings as it should be in applications.
“Heck, let’s just strike the whole 7th Amendment. Certainly nobody is as smart as us lawyers.”
So you have no problem with the validity of your client’s patent — claiming inventions devised by inventors with degrees in science and engineering and years of experience in the field, subjected to years of scrutiny by a Patent Office examiner, and litigation teams with technically-trained lawyers and paid experts with degrees and experience in the same field — being adjudicated by a random selection of people including high school dropouts and humanities majors with no technical experience, after only a few days exposure to the facts of the case?
I grew up in a blue collar family and have great respect for anyone who works hard, but the simple fact is that these cases are not amenable to rational disposition by a lay jury. I’m not saying these cases should be decided solely by lawyers, but perhaps a jury of people with training and experience in the relevant art might be a step in the right direction?
Well guys it’s been a great stay here on PO, but we have new rules of the road being implemented and I’m not supposed to post anymore if my interpretation of the rules is correct. At least from work. Either way I started back working out and I don’t really have time in my day for doing both. I might occasionally stop by from home and check up on TvD etc. but I bid you all farewell.
“…lax rules governing continuation practice have created opportunities for prosecutors to game the system to obtain for their clients claims for subject matter that they didn’t possess at the time of the alleged invention.”
The rules are not lax. The rules are very clear: if you file a continuation, have co-pendency, and properly make your priority claim, you’re entitled to file the continuation.
If you’re upset that the PTO is doing a miserable job, especially when it comes to reviewing continuations for written description and enablement, take a number and get in line.
I am familiar with the presumption of validity and the clear and convincing burden, but what it sounds like is that you’re upset that litigators for patentees are able to shout louder than you.
“There’s no patent so clear that it is immune to being thoroughly obfuscated by patentee’s counsel during a jury trial.”
And there’s certainly no patent that is so clear that a tricky defense attorney, like you perhaps, can’t gin up some thoroughly phony inequitable conduct charge either.
“Judges don’t get the technology most of the time, and jurors can’t be expected to either. Certainly one aspect of patent reform ought to be a constitutional amendment exempting patent litigation from the Seventh Amendment right to a jury trial”
Heck, let’s just strike the whole 7th Amendment. Certainly nobody is as smart as us lawyers.
Crikey. What’s going on? Yet another newcomer to this blog exhibiting like the little boy who pointed out that The Emperor has no clothes. Seen from outside the USA, what RCEsFuelTrolls writes is The Voice of Reason, screamingly evident for a long time, from “first to file” and “added subject matter” Europe. Could it be that the person calling him/herself RCEsFuelTrolls is not actually a patriotic American but, rather, some tricky fellow mailing out of somewhere like China.
“Me too. But let’s be clear – there’s nothing unethical per se about drawing a claim to cover a competitor’s product that appeared after an application’s priority date. If there’s insufficient Section 112 support for the claim, then that’s another matter.”
It’s absolutely unethical if there’s a reasonable belief that the inventor didn’t possess the newly claimed inventions at the time of the priority date — despite whatever after-the-fact rationalization can be done with the specification during prosecution of the continuation. That should be recognized as a breach of the duty of candor. There ought to be a higher burden placed on the applicant to show precisely where in the original spec that each limitation in the continuation claims is supported. If the inventor truly had possession of the invention, and the original application simply didn’t capture the full scope of the disclosure in the spec, then there’s nothing unethical about the practice — but more ought to be asked of the prosecutor and her client to ensure that the new claims are not being supported by mere post-hoc redefinition of terms in the spec.
“Yes, judges do need to be better educated about written description and enablement. You’re a litigator. Why don’t you do it?”
Who says I don’t? Just because the arguments fall on ears deafened by the sound of the patentee’s attorneys screaming “presumption of validity!” from the rooftops, doesn’t mean we don’t try. Judges get to see these cases for a few weeks. Prosecutors get to see them for years. Who’s in the better position to prevent abuses?
“So if you’re such a hot shot litigator, how hard can it be to invalidate all of these terrible continuation patents on written description or enablement grounds?”
I never claimed to be a “hot shot” but if you’re unfamiliar with concepts such as the presumption of validity, and burden of proof, then you surely aren’t one either.
“Or have you tried that and failed?”
The results have been mixed. There’s no patent so clear that it is immune to being thoroughly obfuscated by patentee’s counsel during a jury trial. Judges don’t get the technology most of the time, and jurors can’t be expected to either. Certainly one aspect of patent reform ought to be a constitutional amendment exempting patent litigation from the Seventh Amendment right to a jury trial, and more judges ought to recognize their limits and appoint special masters and court-appointed experts to assist with understanding the relevant art and arriving at dispositions that are both legally and technically sound.
“Surely these lowly prosecutors can’t be capable of such sophistry as to defeat the valiant efforts of one so mighty as yourself?”
I’ll ignore your tone, and just say that I don’t where I disparaged prosecutors as a group. I’m merely stating what should be painfully obvious to everyone: lax rules governing continuation practice have created opportunities for prosecutors to game the system to obtain for their clients claims for subject matter that they didn’t possess at the time of the alleged invention. Whether the prosecutor is acting merely as a zealous advocate for her client or is crossing the line into inequitable conduct is simply a matter of degree, based on the specific facts of that file.
your mutha,
You are correct as usual.
LL,
0 for forever is a pretty low average. But keep swinging away. You may actually make contact at some point.
loosey, those upstairs are metally deficient politicos. they are the cause of all that is bad in ip. i would like to personally kick them all out on their keisters. i would actually pay for that privilege!
wrong again loose lips. I don’t know jd, but he seems like a “right”eous dude.
“Raoul Duke”,
You are fight about most SPEs, unfortunately. However, that is only part of the story. Most will just give cursory reviews to those that are normally doing things well & spend more time on those that are not (or are newer).
Also, thanks to the people “upstairs”, most SPEs have a lot more to do than just review & train. Personally, I think that the training & review are the most important thing that a SPE should be doing. Those upstairs have different views & think that the SPEs should be doing all types of special projects & such that are a lot less importance to the office in long run. And the SPEs ratings are tied to having to do all these projects, most of which they are volunteered for & are not doing by choice. If your director tells you to do project XYZ your options are pretty limited. It is a bad situation & needs to be changed as I have said b4. It wasn’t like that years ago, but for a long time (not just under the current group) it has been getting worse.
thanks,
LL
“I don’t think it was sarcasm. Or a POPA rep.
Wrong on both counts.”
Speaking from 1st-hand knowledge based on the way you worked (& work?), jd? Of course, you are SURE you know it all & are always right, aren’t you?
Oh, & based on the way “your mutha” f’er messed things up in just-n-examiner’s blog, it seems like you two are close brethren (or one in the same). Both obnoxious and self-righteous snobs.
LL
“Question for the examiners that post here:
Do you feel that your SPEs are doing their job in reviewing your Office Actions before they get sent out?”
No.
My SPE is responsible for about ten junior examiners. On an typical biweek, I’ll churn out 6-7 non-finals, 3-7 finals, maybe an after-final or two, and usually one or two allowances, each of which need to be reviewed/signed. Extrapolating these numbers over all ten juniors, my SPE would typically have to review/sign/authorize between 115 and 150 total cases each biweek. Usually, my SPE plows through these cases in about five hours a few days before count Monday. That works out to ~2.5 minutes/case requiring review.
In ~11 months under this SPE, I have yet to have a non-final returned to me for using a poor reference. I have, however, had to write a few second action non-finals for (admittedly) stretching a 102 reference way too far. Therefore, I think it’s safe to conclude that this SPE gives only the most cursory review to the cases he/she signs, and, to answer the question, is not “doing their job in reviewing your Office Actions before they get sent out.”
“My basis is purely anecdotal, based on the fact that, of the last twenty or so patents at issue in my litigations against ‘patent holding companies’ (or whatever euphemism you wish), all but two were continuations. Those continuations were filed after the accused products were on sale, and years after the parent applications were filed.”
So if you’re such a hot shot litigator, how hard can it be to invalidate all of these terrible continuation patents on written description or enablement grounds?
Or have you tried that and failed?
Surely these lowly prosecutors can’t be capable of such sophistry as to defeat the valiant efforts of one so mighty as yourself?
LOL
I don’t think it was sarcasm. Or a POPA rep.
Wrong on both counts.
I see loose lips longley is at it again. Folks, don’t fall for his chummy ways. He’s part of the problem, not the solution.
“XMNR”, I think that someone didn’t get your sarcasm. Or, if it wasn’t sarcasm you must be a POPA rep.
LL
“No, we want other time for phone calls.”
Finally, an honest examiner.
Thank you.
Listening to the nonsense from your colleagues about how they personally do everything correctly, but it’s somebody else’s job to ensure the other examiners do, was getting tiresome.
jd,
ME?!?! “holier-than-thou”? Be serious! Go back & read some of YOUR diatribes, both above & other threads, & see who is the one acting “holier-than-thou” all the time.
LL
“I’d like to see a study that delves into the details of this phenomenon by looking at the filing dates of continuations relative to their parents, the litigation of continuations, the frequency with with continuations are found invalid compared to other patents, etc.”
At least one of those studies (the litigation of continuations) has already been done.
Unless your study was done to determine the percentage of continuation patents that are invalidated under 112, 1st compared to parents that are invalidated for that reason, I don’t see the point.
Yes, judges do need to be better educated about written description and enablement. You’re a litigator. Why don’t you do it?
“You’re an examiner. You probably wouldn’t even answer the phone unless you were getting a count for it.”
No, we want other time for phone calls.
“I’d like to see a study that delves into the details of this phenomenon by looking at the filing dates of continuations relative to their parents, the litigation of continuations, the frequency with with continuations are found invalid compared to other patents, etc.”
Me too. But let’s be clear – there’s nothing unethical per se about drawing a claim to cover a competitor’s product that appeared after an application’s priority date. If there’s insufficient Section 112 support for the claim, then that’s another matter.
“What’s your basis for your claim that this practice is “increasingly common,” or that this is an “elephant in the room”, especially if you’re “wondering” about the timing of continuations, as you stated in your first sentence?”
My basis is purely anecdotal, based on the fact that, of the last twenty or so patents at issue in my litigations against “patent holding companies” (or whatever euphemism you wish), all but two were continuations. Those continuations were filed after the accused products were on sale, and years after the parent applications were filed.
It’s an “elephant in the room” because prosecutors don’t want to talk about it. I talk with prosecutors at my firm, and the perception is that “Oh, others might do that. The patents I write are as pure as the driven snow.” No one stops to question the ethics of the practice; all energies are focused on artfully drafting the claims to find support, through sophistry however dubious, in the specification, irrespective of the obvious lack of good-faith from the client. I’d like to see a study that delves into the details of this phenomenon by looking at the filing dates of continuations relative to their parents, the litigation of continuations, the frequency with with continuations are found invalid compared to other patents, etc.
Sure, the current rules are in place to permit recoupment of a broader scope of the invention than was originally claimed, and the fact that applicants are permitted this safety net is a policy decision that perhaps ought to be revisited.
“So how do you propose revising continuation rules to thwart this practice?”
Honestly, I don’t know. Perhaps demanding more comprehensive descriptions of the nature/scope of the invention, the preferred embodiments, and each limitation of each claim. Perhaps formal education for judges on patent law, with a critical eye toward written description problems in continuation applications. The Federal Circuit seems to be coming around, albeit slowly, in cases like Liebel-Flarsheim v. Medrad and Tronzo v. Biomet. But foreclosing dishonest patent holders from having their cake and eating it too is a tricky proposition when you have an army of skilled prosecutors willing to stretch a spec like taffy in order to make a buck.
Not to disparage the vast majority of prosecutors I know who are upstanding individuals. 🙂
Your holier-than-thou-ness is too funny.
jd,
No. I don’t examine, or act, the way you used to when you were an examiner (& the way you apparently still do based on your bitter posts). I have better habits & a better mentor than that.
LL
JohnDarling,
I’m trying your approach today in a response to a final. Thanks for the idea. I was going to just file an RCE but I like this idea better…
“who discloses an inoperable invention?” There’s more than you might think. People that patent before the build the device come to mind. Just because you think it might work doesn’t mean that it will. There are millions of problems that can go wrong between drawing board and prototype in my art, and they often do, and they’re often in the prior art.
“in any case, the prior art there clearly teaches AWAY from using a lever, so using one is non-obvious”
Sorry, just because I say using a part x is worse than using a part y doesn’t mean it was non-obvious to use part x. It depends on the context. For instance
I have an invention/claim which is a bicycle with two wheels and a sophisticated gear mechanism.
One peice of prior art shows a bicycle with two wheels and a gear mechanism. Another peice of prior art shows that same gear mechanism used on a unicycle that allows for great speed but says that if it is used in a bicycle it doesn’t allow for up hill peddaling because it will break, so it isn’t good to use in a bicycle. Are you going to tell me it’s not obvious that you can, and would be motivated to, use that gear mechanism in a down hill speed racing bike? This example is also one that shows where the claimed invention isn’t all the way operable if perhaps they have a figure showing the bicycle going uphill with that gear mechanism being used. But, maybe nobody had made one before they filed.
“I don’t care about “credit” from some moderator or you.”
You’re an examiner. You probably wouldn’t even answer the phone unless you were getting a count for it.
“There’s blame to be had by examiners, but the prosecutors ought to recognize that they’re standing in a glass house, before they start throwing stones.”
Nobody files RCE’s to “wait for the industry to develop.”
Most continuations are filed because it is impossible to get the claim scope you are entitled to in the first go round of examination given the “quality = reject, reject, reject” mentality that rules the PTO.
You take what you can get, and then go back for what you are truly entitled to.
jd,
I don’t care about “credit” from some moderator or you. Particularly from you! I just like to point out when you are wrong. Of course, if I did that ALL the times you were wrong it would be a full time job in itself. So, I just do it if I get to it. Like above.
LL
“I wonder how many of those continuations are filed after the applicant has been sitting around long enough to observe the trends and standards development in the industry.”
Given the pendency of applications today, probably quite a few.
“The elephant in the room is that, whatever your opinions regarding the current quality of examination, continuation practice needs to be changed in some manner to thwart the increasingly common practice of using continuations to obtain new claims over things the inventor never honestly contemplated at the time of invention.”
What’s your basis for your claim that this practice is “increasingly common,” or that this is an “elephant in the room”, especially if you’re “wondering” about the timing of continuations, as you stated in your first sentence?
So how do you propose revising continuation rules to thwart this practice?
Question for the examiners that post here:
Do you feel that your SPEs are doing their job in reviewing your Office Actions before they get sent out?
I feel that in the last few years, the SPE clearly has not read the action, if they had they wouldn’t have signed it! Seems to me proper review would be excellent training/mentoring and increase the quality of the restriction/FOAM/etc. And, from comments I’ve seen, I feel like the SPE is merely acting as a gatekeeper to keep examiners from allowing cases. OR am I misunderstanding what SPEs are suppose to be doing?
Getting back to the graph, I wonder how many of those continuations are filed after the applicant has been sitting around long enough to observe the trends and standards development in the industry.
Too often it seems that inventors and their assignees only “fully realize” the scope of their invention long after they have the benefit of seeing what everyone else is doing.
The elephant in the room is that, whatever your opinions regarding the current quality of examination, continuation practice needs to be changed in some manner to thwart the increasingly common practice of using continuations to obtain new claims over things the inventor never honestly contemplated at the time of invention.
I’m sure the prosecutors here will chime in with arguments that this (a) doesn’t happen or (b) when it does happen it’s easily dealt with via 112 defenses. Well, the fact is that expertly written specs are sufficiently vague (and useless for public notice) to support all sorts of claims, and crafty litigators can always latch on to a sentence or two in the spec and argue that it’s sufficient for enablement. This, combined with the fact that most judges are too cowardly to smack down clear abuses of continuation practice with written description arguments, leads to the well-deserved backlash we’re witnessing today.
There’s blame to be had by examiners, but the prosecutors ought to recognize that they’re standing in a glass house, before they start throwing stones.
“It doesn’t necessarily have to be after final. But I have had 3 finals withdrawn in the past 4 months using this argument.”
That’s it; I’m trying it. 🙂
“We’re talking about an after-final response, right? How effective do you find this to be?”
It doesn’t necessarily have to be after final. But I have had 3 finals withdrawn in the past 4 months using this argument.
But I currently have 2 pre-appeals where I’ve stressed it and noted the examiner’s complete failure to address any arguments. The pre-appeals are with the same examiner who apparently just doesn’t get it.
How effective is it? I don’t have any statistics for you, but according to e6k, all of the SPE’s over there have photographic memories with the MPEP nicely saved and follow it verbatim, show it should work every time.
Right?
LOL
LL, if you really need credit for your posts, by all means, have some credit.
Just increase the quantity of your blog post production to 110+% and I’m sure the moderator will rate the quality of your posts as outstanding.
You do work at the PTO? Correct? That is how it works over there, no?
“Every now and again I run into those types of situations. The question then becomes: Is the instant invention just as worthless/inoperable etc. as the prior teaching described it as? If it is, then it was obvious because you’re just using the sucky feature from the prior art rather than the good feature. Nothing special there. If you managed to use a lever and it resulted in something that worked better than expected then I might let you off.”
who discloses an inoperable invention? wouldn’t that run afoul of the enablement requirement? in any case, the prior art there clearly teaches AWAY from using a lever, so using one is non-obvious. It doesn’t matter how “sucky” the invention may be, if it’s novel and non-obvious, you are to allow it.
I wish you would stop harping on the unexpected results thing. How does a lever ever ‘work better than expected?’ It’s a darn lever and all sorts of calculations can be performed, so that whatever it accomplishes won’t be ‘unexpected.’
“I was owned because of procedural issues mostly. The one where I lost on the merits was because he completely misconstrued what the prior art actually said in his background and I used that against him in a 103.”
What procedural issues were you owned on? As I recall, your SPE found your 103 to be insufficient. Was the attorney’s description of the prior really an effort to mislead the patent office, or was it just perhaps a reasonable interpretation rather than the PTO’s typical ridiculously broad and completely unreasonable interpretation?
Hey, JD,
You said “Clive, you’ve accurately described the ticket buying process the examiners use to hop on the RCE gravy train.” You may not have noticed (or read? comprehended?) but it was I who brought that up & said examiners that do that are wrong & Clive was agreeing with me. And I DO work at the PTO.
thansk,
LL
“for the love of god, you never ever want to use a lever in this application, as a widget cannot be selectively operated by a lever”
Every now and again I run into those types of situations. The question then becomes: Is the instant invention just as worthless/inoperable etc. as the prior teaching described it as? If it is, then it was obvious because you’re just using the sucky feature from the prior art rather than the good feature. Nothing special there. If you managed to use a lever and it resulted in something that worked better than expected then I might let you off.
“Prepare to be owned during a pre-appeal conference, as you have indicated has happened to you in the past.”
I was owned because of procedural issues mostly. The one where I lost on the merits was because he completely misconstrued what the prior art actually said in his background and I used that against him in a 103.
“In your response, note the “Examiner Note” to Form paragraph 7.38 in MPEP 707.07(f).”
We’re talking about an after-final response, right? How effective do you find this to be?
“This happens to me routinely: the rejection relies on a primary reference for its gist, and a secondary reference to supply a tidbit. My response (I believe) knocks out the primary and secondary references. The second/FINAL action continues to rely on the primary reference, replaces the secondary with a new secondary reference, makes the rejections final, and ignores my remarks, deeming them moot in view of the new grounds. Both actions relied heavily on that primary reference and it’s clearly become the centerpiece of the prosecution, but the Examiner deliberately refused to engage in a discussion of its teaching/interpretation.”
Clive, you’ve accurately described the ticket buying process the examiners use to hop on the RCE gravy train.
In your response, note the “Examiner Note” to Form paragraph 7.38 in MPEP 707.07(f).
But of course we all know that all of the SPE’s over there know the MPEP like the back of their hand and follow it verbatim, right?
ROFLMAO
“(And like Mr. Long, I’m not saying this is how it should be and I’m not complaining, I’m just saying how it is.)”
You should be complaining. Don’t you know it’s your job to make the examiner do it correctly?
“This happens to me routinely: the rejection relies on a primary reference for its gist, and a secondary reference to supply a tidbit. My response (I believe) knocks out the primary and secondary references. The second/FINAL action continues to rely on the primary reference, replaces the secondary with a new secondary reference, makes the rejections final, and ignores my remarks, deeming them moot in view of the new grounds. Both actions relied heavily on that primary reference and it’s clearly become the centerpiece of the prosecution, but the Examiner deliberately refused to engage in a discussion of its teaching/interpretation.”
Clive, you’ve accurately described the ticket buying process the examiners use to hop on the RCE gravy train.
In your response, note the “Examiner Note” to Form paragraph 7.38 in MPEP 707.07(f).
But of course we all know that all of the SPE’s over there know the MPEP like the back of their hand and follow it verbatim, right?
ROFLMAO
“(And like Mr. Long, I’m not saying this is how it should be and I’m not complaining, I’m just saying how it is.)”
You should be complaining. Don’t you know it’s your job to make the examiner do it correctly?
Well Lowly, I must agree that “a widget cannot be operated by a lever” does rather seem to teach a bit away from your claimed “widget selectively operated by a lever”. Bit like the prior art statement “Nobody will ever run a 4 minute mile” fails to disclose the idea of running a 4 minute mile, I suppose?
“Lowly, if a reference includes the words “use a widget to do Y” it discloses the idea of using the widget to do Y, doesn’t it, regardless whether the words disclosing the use are preceded by other words that tell you that the disclosed use isn’t a good idea. Exr is right, no? Mind you, if you are arguing what’s obvious, as opposed to what’s disclosed, that might be different, no?”
I should be more specific.
The claim will be something like the following.
A device comprising:
a lever; and
a widget selectively operated by said lever to XYZ.
The examiner will assert that reference reciting “a lever” and “a widget selectively operated by a pulley. the widget is not operated by a lever because, for the love of god, you never ever want to use a lever in this application, as a widget cannot be selectively operated by a lever,” discloses the features of my claim.
Lazarus writes: “On the flip side, another pet peeve of mine is when examiner’s make a final & just say the applicant’s remarks are moot because of new grounds but the rejections keep some or all of the same references that were explicitly argued by the applicant. This is wrong. The examiner needs to address ALL of the remarks presented if they apply the any or all of the rejections being made in the new action. I too often see examiner’s try to do this & I kick them (actions) back when I see it.”
This happens to me routinely: the rejection relies on a primary reference for its gist, and a secondary reference to supply a tidbit. My response (I believe) knocks out the primary and secondary references. The second/FINAL action continues to rely on the primary reference, replaces the secondary with a new secondary reference, makes the rejections final, and ignores my remarks, deeming them moot in view of the new grounds. Both actions relied heavily on that primary reference and it’s clearly become the centerpiece of the prosecution, but the Examiner deliberately refused to engage in a discussion of its teaching/interpretation.
Now I’m facing the appeal-or-RCE fork in the road. I have no idea how the Examiner will respond to my remarks on the merits of the primary reference; appeal takes much longer and is costlier than the RCE; and I don’t like being blindsided.
(And like Mr. Long, I’m not saying this is how it should be and I’m not complaining, I’m just saying how it is.)
Lowly, if a reference includes the words “use a widget to do Y” it discloses the idea of using the widget to do Y, doesn’t it, regardless whether the words disclosing the use are preceded by other words that tell you that the disclosed use isn’t a good idea. Exr is right, no? Mind you, if you are arguing what’s obvious, as opposed to what’s disclosed, that might be different, no?
“I think he said, usually no. Lol, I should try his method. Simply recheck the refs and maybe at the most skim the arguments. Reading all that sht takes away too much time. Takes you guys 6 pages to say “Um, x feature isn’t shown in the way it is used in the claim”. It’s like pulling a needle out of a haystack to find your actual argument half the time.”
Prepare to be owned during a pre-appeal conference, as you have indicated has happened to you in the past.
I can’t count how many times an examiner asserts “reference X discloses a widget to do Y” when the reference actually says “for the love of god, never ever use a widget to do Y.” I win 100% of the time on these if I take them to pre-appeal.
Posted by: exaiminethis | Jul 24, 2008 at 01:36 PM
Thanks for the reply. I understand current US practice, and I was speaking as to how I’d like to see it changed.
Re: 2600examiner’s comments, first, I assume when we’re discussing page length we’re talking about the remarks section, not the entire amendment. Usually, my listing of claims is longer than the remarks section.
A lot of the remarks though are hopefully made to keep the record clear. When I make amendments, I state what amendments are made and where they find support in the specification. I state which claims are rejected by what references and my understanding of the examiner’s reasoning, so the examiner (if they read the remarks) can know what point I’m rebutting. Just these two practices mean my remarks section is usually longer than one page.
Posted by: 2600examiner | Jul 24, 2008 at 10:37 PM
–If the remarks are long I am interested… If they’re short most of the time I just assume…–
Are you saying you read the long remarks but not the short remarks? I usually try to keep my substantive remarks short so the examiner will decide that reading them does not take up too much time. I guess my reasoning was incorrect. I now have incentive to be long-winded and rehash the same point multiple ways. My managing partner will be pleased; when clients see a long response, they’re more willing to pay the bills (regardless of how convincing the response is).
Most recent examiner annoyance: the last five office actions I’ve received in one case have exactly the same paragraph in response to my five different arguments and amendments. Finally, the client has agreed to pay for the appeal.
How about giving examiners counts for responses after the first OA and advisory actions (or at least partial counts?) and increase QC reviews on responses so Exmrs who might be inclined don’t blow them off.
(With the caveat that QC reviews would be done by attorneys who work for the PTO and not the politicized, poorly trained flunkies who are currently manning/womanning the ranks of QC reviewers. Plus the reviews should be done in the spirit of increased training rather than punishing.)
This might increase Examiner incentives to do a more thorough job on these pre-RCE, post-first OA actions, since right now examiners essentially get no credit for half of their work product. (Imagine if you couldn’t bill for most of the time you spent working? Even the most professional souls would feel the sting of spending time on actions that don’t go towards billabe hours.)
Yo 2600! Drop the bad attitude. I always read the applicant’s remarks and I always respond to everything of substance. Like you are supposed to do.
link to examinethis2007.blogspot.com
“I think (hope!) that 2600examiner misspoke. You MUST read all of the applicant’s remarks. Not necessarily word-for-word, as some of it will be boiler-plate & form paragraph stuff (just like actions), but you do need to read and consider all of the substance of the remarks.”
I am familiar with MPEP 707.07(f), but would say that I’m only supposed to read all of the applicant’s remarks. My SPE doesn’t check most of my cases until count Monday, so no one’s really in a position stop me from ignoring remarks if I want to. If the remarks are long I am interested to know if there’s a reason. If they’re short most of the time I just assume there are no arguments and go forward with a “moot in view of new ground of rejection”.
What I find frustrating is when I have spent time and made a solid argument and the examiner’s only response in his next action to my argument is “the examiner does not find the argument to be persuasive.”
I think (hope!) that 2600examiner misspoke. You MUST read all of the applicant’s remarks. Not necessarily word-for-word, as some of it will be boiler-plate & form paragraph stuff (just like actions), but you do need to read and consider all of the substance of the remarks.
If you review the rejections & art without 1st reading the remarks, how can you determine if what the applicant is arguing is valid or not??? Seems to me that you will be wasting more time doing it your way. If you read their remarks & THEN review the art with an eye towards what they argue, you will be a lot more efficient.
Now, if you were trying to point out that a lot of the times when the applicant amends the claims ALL of the arguments are directed to JUST the newly added limitations (often the case), then you are right that there isn’t much to respond to in your action. However, until you actually READ the remarks you really do not know if that is what they argued or not.
Though, it does often seem like some lawyers like to just right pages & pages of fluff when they are just arguing the newly added limitations. They will go on & on how the rejection was wrong because the references don’t show the newly added limitations and point it out for every claim. Well, OF COURSE the rejection didn’t point out these limitations because they weren’t in there before! (Pet peeve of mine.) Why waste our time & yours, as well as the applicant’s money, when instead of 18 pages (when you reproduce the newly amended claim in your response as well) you can sum it up by saying something like: “The references of record do not show the limitation of XXXXX as now recited in claim 1-99.” Same effect & saves time & money.
On the flip side, another pet peeve of mine is when examiner’s make a final & just say the applicant’s remarks are moot because of new grounds but the rejections keep some or all of the same references that were explicitly argued by the applicant. This is wrong. The examiner needs to address ALL of the remarks presented if they apply the any or all of the rejections being made in the new action. I too often see examiner’s try to do this & I kick them (actions) back when I see it.
thanks,
LL
Looks like filings have been rather steadily and unremarkably rising. So much for Mooney’s bubble…
“Why is this? Because the PTO has about 60 APJ’s for an examining corps of 5,000+. And PTO (mis)management is further reducing the workload of the APJ’s by forcing applicants to do their job too. Heaven forbid the APJ’s actually read the app, and the prior art references, and the OA’s, and the responses too!!!!! What is this world coming to?????!!!!!!! Let’s just force the applicants to “summarize” it all for them.”
Prof. Wegner, is that you? 🙂
“I think he said, usually no. Lol, I should try his method. Simply recheck the refs and maybe at the most skim the arguments. Reading all that sht takes away too much time. Takes you guys 6 pages to say “Um, x feature isn’t shown in the way it is used in the claim”. It’s like pulling a needle out of a haystack to find your actual argument half the time.”
I just finished an amendment with a response that was 18 pages long. The claims were amended based on my non-final. I was surprised at the length given the amendment, so I did skim the arguments. There was nothing in there that needed to be addressed.
“Do you at least READ the attorney’s arguments? You are not infallible and are capable of misreading and misunderstanding the art, you know.”
If I need to, yes. If the attorney amends around my previous rejection, the arguments are just going to be that the old rejection doesn’t teach the new claim limitations. If they didn’t amend and I still like my rejection, then I OCR their arguments one-by-one and explain why I disagree.
“Because with your nearly one and one half years of experience and your BS or MEng, there’s no possible chance you misinterpreted the reference or missed something in Applicants’ spec that defines a claim term… Gotcha.”
If I get to the point where I’m keeping a rejection of a claim that hasn’t been amended, of course I have to respond to arguments. My point was if there was no amendment usually there’s a reason. If there’s a clear error on my part I’ll usually see it without having to read the arguments first.
Here’s an interesting read:
link to oceantomo.com
Conclusion:
“We believe the U.S. Patent Office is doing a good job currently and that patent quality is as high if not higher now
as it was five years ago. Patent quality is also being recognized and rewarded in existing and emerging markets for intellectual property transfer and in the
broader capital markets. Thankfully, for those of us in the profession, we are beginning to see data—already there—confirming what we believed all along.
Patent quality can be measured; it is improving; and it makes a difference.”
“Do you at least READ the attorney’s arguments?”
I think he said, usually no. Lol, I should try his method. Simply recheck the refs and maybe at the most skim the arguments. Reading all that sht takes away too much time. Takes you guys 6 pages to say “Um, x feature isn’t shown in the way it is used in the claim”. It’s like pulling a needle out of a haystack to find your actual argument half the time.
Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah Blah
insert argument here
Blah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah BlahBlah Blah Blah Blah Blah Blah Blah
^ that is the attorney’s response. I love the guys that come in with a one page response. Gets the job done so much faster. EVERY TIME.
Funny that 2600 also thinks overclaiming is a large problem.
“Truth be told I rarely have a need to read attorney’s arguments. If there’s an amendment, the arguments are usually irrelevant. If there’s no amendment I’ll recheck my references (a couple of times I’ve misinterpreted abbreviations in figures). The few times I’ve gotten to a stage with no amendment and no perceived errors the arguments usually revolve around my claim interpretation. At that point I go final and suggest a minor language change.”
Because with your nearly one and one half years of experience and your BS or MEng, there’s no possible chance you misinterpreted the reference or missed something in Applicants’ spec that defines a claim term… Gotcha.
You seem like a bright guy/gal and I’m sure you actually meant to say that that you DO read the arguments in detail and double check the spec, claims, and refs to make sure you didn’t make a mistake. Please be sure to apply a little more rigor to your rejections than you do to your blog responses. Half-cocked statements like yours above are exactly what practitioners are seeing in their joke finals. And that’s why we’re so mad about having to spend our clients’ money on appeals and RCEs.