According to an AIPLA release, the PTO will not finalize its proposed rules on IDS statements or Markush claims before a new president takes office in January 2009. Peggy Focarino (PTO Deputy Commissioner) reportedly made this announcement on October 24, 2008 at the AIPLA Annual Meeting. This decision falls in line with the OMB Memo to all federal agencies that any “final regulations should be issued no later than November 1, 2008.”
As discussed earlier on Patently-O, IDS statement proposal would require an applicant to provide supplemental information for any submissions more than 25 pages in length or written in a foreign language. Likewise, the supplemental information would be required when more than 20 documents are submitted in a single case. The supplemental information includes pin-citation to important features of the document and a discussion of how the disclosed features relate to the applicant’s claims.
Me? Trollin MY PO? Not today my good friends.
Unemployable? Hah, Riiiiight. However, you might be right about getting stuck with me. The current economic downturn makes the stability of the job appealing. Probably not appealing enough, but who knows how far down the tank our econ could go? Also, with my RCE gravy train pulling into the station the job is so much easier now. Abandonments abound as well. My art I’m using is definitely much better than when I first started, but perhaps it’s more an indication of the economic downturn and less people wanting to pay to prosecute.
“Where else would he get such virulent anti-patent, anti-applicant, anti-patent bar attitudes”
Who told you I’m anti-patent? I dare say I’m very pro-patent. Any invention that would require a disclosure to make its way into the public realm I am all for granting a patent for the public to obtain. I am however very anti-bad patent. And since the vast majority that are currently on the books are bad ones (thank you KSR, and likely Bilski here soon) I am against a good portion of the patents on the books. You should be too. Overall, my opinions on patents are similar to that of the SC.
Also, I’m for the little guys, aka “the applicant”, and against the corporations exploiting the little guys works, aka “the assignee”. Perhaps you don’t believe me? Ask around, more than a couple of independent inventors have mailed me at examiner6k to discuss various matters. Some are probably reading right now, though they seem to not post. Most of the time I have to pass them on to an attorney of course because I cannot give opinions for them and etc. In any event, I try to help them out how I can. Also, how could I be anti-applicant? I plan on likely being one myself one day. I have quite a few ideas jotted down right now, some of which have passed an initial search. What? I’m anti-myself now?
As to my being anti-patent bar, meh, I’m not against the bar itself, but there are more than a few issues I take with the conduct currently sanctioned by the system, that causes the conduct of the bar. Sure, most attorneys I know don’t seem to be bad people, they just do bad things for their job. Anyone in the room believe that a claim/limitation that was concieved of by an attorney, without the underlying subject matter presented to him by the client, helps to protect the client’s work (as opposed to his own)? Anyone believe that an attorney filing an app with claims that are blatantly obvious (to him and everyone else in the art with half a brain) is behaving equitably? Is there one person here that believes that an attorney who advances what he knows to be a meritless argument on the behalf of his client is acting equitably? Does anyone contest that these things happen routinely? That’s what I thought. So, yes, I’m against the things this system currently sanctions with regards to some behaviors of attorneys. You should be too if you actually believe in promoting the useful arts as opposed to merely promoting your apps interests.
I disagree. e6k is symptomatic of the cancer at the PTO. The higher ups have been filling the heads of the recent hires with utter garbage. You only need read e6k’s posts to understand that. Where else would he get such virulent anti-patent, anti-applicant, anti-patent bar attitudes? He’s certainly not smart enought to come up with them on his own.
Let’s hope the attrition rate climbs a little higher.
Come on you guys, 6000 is a troll, and syays whatever he thinks will PO the other posters here.
It’s too bad you’re un-employable anywhere but the PTO. We’re probably stuck with you for another 20+ years. And your incomprehensible writing.
Sigh.
Um no, I caught it, the same arguments being present make no difference as to if you were convincing the first or second time. Maybe if you’d care to think about that you’ll come to the same conclusion I did. Just like thousands of things I’ve discussed with lawyers were later thought about by the lawyer and then they came to the same conclusion I did originally.
“…and then seeing the same arguments on appeal result in a new office action…”
Guess you missed that part of JTS’s post, 6k. Sort of the way most examiners miss most of the arguments until it’s time to man up and write an examiner’s answer.
Unfortunately I’ve found that most of the examiners hired in the past 3-4 years are simply useless. They’ve been through the brainwashing at the PTA and don’t know anything but reject, reject, reject.
Thank goodness the attrition is so high.
“if bashing the whole examiner corps because of one post-happy doofus helps you let off some steam, it’s understandable … I’m tired tired tired of making arguments during prosecution, getting nowhere, and then seeing the same arguments on appeal result in a new office action … wtf … nothing has changed, the examiner just finally decided to do their job?”
Wait wait wait, so, bashing the whole corps isn’t right because of me, but it is right because of one or two examiners reopening prosecution after you weren’t convincing the first time around? Gotcha.
QQ moar bad attorneys, QQ moar.
somebody,
lighten up a bit. 6k is NOT the model examiner. I’ve been at this for 8 years, and have found that most examiners operate in good faith and can be collaborated with at some level.
there are some stinkers, but so too with prosecutors. if bashing the whole examiner corps because of one post-happy doofus helps you let off some steam, it’s understandable … I’m tired tired tired of making arguments during prosecution, getting nowhere, and then seeing the same arguments on appeal result in a new office action … wtf … nothing has changed, the examiner just finally decided to do their job? still, it’s a little unfair to lump all the examiners with 6k, who’s just a know-it-all youngster.
e6k’s posts are all the evidence you need that the PTO’s problems are the fault of PTO management. He’s ignorant, and delighted to be so, and insolent. He is their model examiner.
6000: maybe it’s just because they pay me (and not you) by the hour. They find that it pays to be nice to me. Like I say, US patent attorneys are intelligent, and behave rationally, within the constraints of the system in which they practise.
Malcolm, sorry. Blissful is a bit sick-making isn’t it. Can’t resist winding folks up though.
“and very decent folks they are too.”
By day, and only when they’re not drafting (i.e. inventing) claims.
“Then I can retire in the blissful knowledge that my efforts helped to push through a rational reform of US patent law.”
BLOGGING FOR A BETTER TOMORROW
Somebody, is there perhaps a touch of selective memory here. Have I not often written that the US patent bar behaves rationally, given the system in which it practises. May I be permitted to assert that the Rules of the Game are here at fault, not the players? Given the bonkers statutory provisions, and the inability of the PTO to change them, is it any wonder that its behaviour is irrational. Throwing out PTO management won’t cure the ills of the US patent system, because the Statute remains and the Statute is the root of the problem. I have the (perhaps insane) idea that if I go on and on long enough, on this blog, reform efforts might actually get round to making rational changes in the Statute one day. Then I can retire in the blissful knowledge that my efforts helped to push through a rational reform of US patent law. It is dangerous enough for me to offer any criticism of the US patent statute. I should be very careful not to criticise on this blog any US citizen or group of citizens. Nor would I want to. My clients are mostly US patent attorneys, and very decent folks they are too.
Not shouting you down. But nonsense like this
“So, prosecutors know that even a duff claim works its intimidatory power, at least up to the point it gets to the CAFC, or the FTC, and they bully such claims through the PTO, accordingly, to the detriment of orderly conduct at the PTO.”
shouldn’t go unanswered. The suggestion that orderly conduct at the PTO is in jeopardy from the patent bar is simply ridiculous. What is clearly a detriment to orderly conduct is the lawless behavior of the higher ups at the PTO, including their directive to examiners that quality = reject, reject, reject, and their implementation of the totally unaccountable “second pair of eyes” review to enforce that directive.
You have many criticisms of the U.S. patent bar, but none for the corrupt management of the PTO.
To me, that’s just ridiculous.
I wrote “valid” intentionally. I am not saying that juries and district courts are frightened to find claims unenforceable for inequitable conduct, but just that they have difficulty (even after having digested all the evidence from the opposing parties, which advantage the PTO did not have) getting to the considered point of deliberately reversing the PTO on novelty and non-obviousness. You going to shout me down again somebody, or even JAOI, that my position, thus re-stated, is ridiculous nonsense.
Maybe Max has gone MadMax, or maybe he Just had too much Schnapps.
Couldn’t agree with you more, somebody. It is indeed ridiculous.
“Thanks In-house but it’s quite important to prosecution practice at the PTO what influences the average jury member. We in Europe are all told that the seal and ribbon of the PTO is a magic shield protecting any issued claim, that signals to any district court or jury that they lack the credentials to doubt its validity, even for a fleeting instant. So, prosecutors know that even a duff claim works its intimidatory power, at least up to the point it gets to the CAFC, or the FTC, and they bully such claims through the PTO, accordingly, to the detriment of orderly conduct at the PTO.”
This is even more ridiculous than your usual nonsense.
Thanks In-house but it’s quite important to prosecution practice at the PTO what influences the average jury member. We in Europe are all told that the seal and ribbon of the PTO is a magic shield protecting any issued claim, that signals to any district court or jury that they lack the credentials to doubt its validity, even for a fleeting instant. So, prosecutors know that even a duff claim works its intimidatory power, at least up to the point it gets to the CAFC, or the FTC, and they bully such claims through the PTO, accordingly, to the detriment of orderly conduct at the PTO.
If Exmrs continue to require species elections on Markush groups, don’t see any point in including those kinds of claims. Better to define the genus in the spec as including the species and specifically claim commercial embodiments in dependent claims one at a time.
Max,
Although my comment is off-point to your question, I offer the following observation.
Your comment “for as long as the Presumption of Validity remains part of the law..” reminded me of a recent talk by a Federal Trade Commission staff attorney at the recent AIPLA meeting.
From my perspective of the talk, I don’t think that the FTC respects or even acknowledges the “Presumption of Validity.”
I wonder if there are any others with this same perspective?
What do you folks think about the new Markush rules?
I like how the new rules would make it difficult to group everything and call it one invention (probably a good thing for examiners). The tradeoff seems, at least in my mind, that the effect would cause a ginormous growth in the backlog at the PTO.
Rant, how can the PTO be anything but obstructive, for as long as the Presumption of Validity remains part of the law, along with trial by patent-incompetent finders of law and fact, and the recognition of patentability of stuff (business methods) that the PTO can’t even begin to search? Can’t see how a new Administration, that puts the interests of the US public first, can do much to meet your wish for a PTO that is a bountiful giver of issue certificates on all the unfeasibly wide claims of every WO and A publication.
What about the ex parte appeal rules? I recall that the USPTO was requesting comments as recently as 10-8-08.
I cannot wait for a change at the USPTO. The artificially repressed allowance rate has turned Examiners into horrible people who treat the MPEP as a treasure trove of technicalities that can be used to reject applications. Seriously, these days, even the most meritorious application can be rejected 8000 different ways and trapped into procedural loopholes (requirements for additional information, any amendment being drawn to a nonelected invention, noncompliant appeal briefs, etc. etc. etc.), with no recourse for the applicant. Bring on the new administration!
Preview of the supplemental information in most cases: “Um, er, this reference doesn’t seem to be relevant to the claims at all, but we just wanted you to see it :)”
Dave,
We (or at least I) will stay vigilent. For example, from what I’ve heard about who are the IP advisors for Obama, I’m not optimistic that any sort of “reality” will return to the USPTO.
Very important to note –
These two rules are notdead, only blocked until the end of the Bush Administration. On January 20, 2009, Mr. Dudas – as ineffective as he has been, the only check on Mr. Doll’s, Mr. Toupin’s, Mr. Rolla’s and Mr. Love’s overreaching, refusal to acquaint themselves with basic facts, and lack of understanding of the patent system – is out, and the office of Director will either be open, or Mr. Doll will be Acting Director.
Keep guard at the battlements. The career staffers at the White House Office of Management and Budget (who are the resident skeptics of agency regulations, and survive the change of administration) need to hear from you about the burdens of these rules. Contact me if you’re interested in knowing how. DBoundy [at] Cantor.com
Make sure you leave at least 10 spots when you file your initial IDS – you get that ISR back with 8 cites and you’ve already submitted a 20 citation IDS and you’ll be doin’ the ol’ sof’ shoe ‘splaining to the client why it is the supplemental IDS is going to cost 1500.
The PTO hierarchy finally saw the “handwriting on the wall.” What a waste.
The IDS rules included a procedure for filing an IDS after allowance that without using an RCE or continuation.
While the procedure its own problems, at least it did provide some way out to file an IDS once you’ve run out of RCEs and continuations under the now enjoined continuations rules package.
Or viewed another way, perhaps the end of the IDS rules strengthens the argument against the new claim rules.
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