Chamber of Commerce Calls for Internal Changes at the PTO

The US Chamber of Commerce has released a set of recommendations for President Elect Obama in dealing with the USPTO. Some highlights below:

• Comparing the past twenty years:

   

Year	Budget (Mil)	Patent Examiners	New Apps	Total Backlog	Pendency (Months)
1988	$144	1,540	148,000	268,000	20
1998	$567	2590	240,000	481,000	24
2008	$1,915	5,960	463,700	750,600	32

    

• The PTO should use "fee and order of examination incentives" to encourage applicants to provide higher quality applications and information disclosures. Thus, instead of making a hard cut-off for RCE filings, the PTO should consider charging an "increasing fee for successive continuations or RCE filings."
• The PTO should allow oversight and transparency in its quality review process.
• The Second-Pair-of-Eyes Review program "seems to be breeding a negative attitude among examiners and many applicants. The concept of quality review is essential, but the focus needs to change so that poor, unjustified decisions are not made in the alleged interest of quality."
• The next PTO director should have experience in patent prosecution and litigation.
• Deferred Examination: "If the PTO cannot reduce its backlog through other means and the number of patent filings continues to increase, consideration should be given to allowing patent applicants to defer examination of their applications for perhaps up to three years."
• Key contributors to the report include Dana Colarulli (Legislative lead for the IPO); Q Todd Dickinson (former PTO director); Nicholas Godici (former PTO commissioner of patents); Esther Kepplinger (former director of patent operations at the PTO); Mike Kirk (former deputy commissioner of patents); Stephen Kunin (former director of patent examination policy for the PTO); Gerald Mossinghoff (former PTO director); Charles Van Horn; and Herb Wamsley (IPO) .
• Read the Report.

Comments

[Pragmatic]

Thanks for the soap box DavidE.

If I know that the application (and more to the point, the claims) is (are) not novel and non-obvious, I wouldn't prosecute the thing. I do have pride in my work product. I do not serve my client to the best of my ability otherwise. My earnings potential actually increases because of my ethics. My ethical obligations are not so immense in how 123 outlines the (usual) situation above. In such a situation, anon is completely off-base in what the OED can or should do. The preaching (anon's, 6k, yours) acts like a smokescreen as Noise indicates and those whose actual duty is being shirked hide in that smoke.

None-the-less, the gatekeeping in question - proving patentability or making sure that all prior art is carved around so as to advance the art - is the duty the Office, not my ancillary and already documented and regulated requirements. Foisting the duty of the Office on me is why the recent rule changes failed so miserably. Yet, the bankrupt ideology persists as witness by anon and 6k postings. In order for the Office to do its job, the Office needs to recognize what its job is.

[DavidE]

Pragmatic, I felt it was needed. The attorney does perform a gatekeeping function (whether anon is correct or not), and many of the earlier posts were suggesting a belief that there was none.

Further, I have personally seen many applications which are clearly anticipated or obvious at the outset (the entire idea, not just the claims), and I give more credit than to believe the attorneys who file these applications are too dumb or ignorant to realize it. My conclusion? The attorneys who filed the applications violated their ethical obligations. So that's another reason I felt compelled to write something.

As my last post in this thread, I'll end by pointing out that it is much more common to see the poor work from the other side than the poor work from one's peers. We should all probably keep this in mind when we discuss problems with the patent system and realize that those posting here are the ones who want the system to improve. This stuff doesn't need to get as personal as it always tends to.

[JohnG]

I wish I had DavidE's crystal ball! Ha ha ha

[breadcrumbs]

Good point DavidE; however, such is the nature of anonymous blogging with passionate people. While I agree that civility makes for a better intellectual exchange, this is not the profession (or place within the profession) for the thin-skinned. Please don't let the seeming harshness prevent you from discussing your views.

[JohnG]

I don't like being called a liar. The fact that I, or the inventor(s) may have been ignorant with respect to existing prior art is not the same thing as willfully ignoring/hiding art. This is a typical, and wrong, examiner impression. I should know because I was one for many years.

[anon]

Joh G. You are correct. However, when the inventor is in the ineventive entity of other patents and/or patent applications in related art he should be charged with the knowledge therein and held accoutable if the information recited in the other patents and/or patent applications are not brought to the attention of the USPTO.

This was a situation I faced. I came into a law firm a large client bought a small portfolio. I was handed the cases one at a time by a partner, i.e., worked on one case one month another case a few months later and so on.

It was in a coversationw with the inventor that he informed me of the totality of the patent applications pending. All were drafted and filed by a pre-eminent patent law firm. Not one IDS was filed in any of the cases and it was four years later.

Suddenly I am having to comb through all of the office actions and applications . . . no secretarial assistance and with minimum time afforded because the new law firm didn't want to charge the client too much . . . not good for business. It wasn't a pre-eminent law firm.

This is not the only time I have seen this. This is just crap. There ought to be a way for an associate to handle this situation without being screwed for their time.

I know that others are facing this. There ought to be an ethical rule that says a partner shall not ding an associate for time fixing someone else's mistake. It is just crap that this situation exists thousands of time over.

If OED does not get into each and every patent practice and start controlling the internal operations to avoid these problems . . . the system will never work.

[anon]

I know another manner in which to solve some of the prior art issues. If a patent application is found to be anticipated in view of a piece of prior art that is owned by the assignee of the application under examination more than one year before date of the examination then a final office action should be allowed regardless of the point in the process of the prosecution.

[6]

"The first part implied that the attorney needs to conduct a prior art search"

That is your subjective opinion. My subjective opinion is that he referred to prior art that was known to you and the inventor and that you go too far in reading things into his statement.

"By the way, 6, I know that you're an examiner. Perhaps if you spent more time examining patent applications and less time reading this blog and arguing with attorneys about the law that you know nothing about, the quality of your Office Actions would improve."

Mah OA's are just fine thx. My workflo on the other hand...

" client comes in and says he's invented something useful that he has never seen before. I defer to his years of experience in the field"

So he lies to you and you defer to him. What's new? Same ol' sob story I hear day in and day out.

"The "...you know of" is a definite distinction which rules out the phantom OED obligation that an attorney must prove patentability of the application. Your strawman is smoking!"

You created and then set fire to a strawman? What's new? Attorneys do it all the time around here. FYI, again, the only person bringing up the alleged phantom OED obligation was originally, and is still, you.

I just jumped in to save you from your own ridiculousness, but if you feel like you need to continue then carry on. Maybe Anon will be back to validate your subjective opinions and then you guys can really have it out.

"Remember, the client is "entitled to a patent" (that's from section 102, for all you examiners who have never read it) unless the Office can show otherwise. That makes the Office the gatekeeper, not the practitioner."

There is no law stating such ridiculousness that you assert. There is however a law stating that it is when an application appears to be entitled to a patent that it will be issued. There is no law enabling the pto to issue an application that has not yet appeared to be entitled to a patent. Entitlement under 151 must be different than entitlement under 102 or else no application with a 112 as the sole rejection would ever be stopped from issuing. You likely know this well, but thanks for trying to contort the facts. As to the gatekeeper part, you are still a de facto gatekeeper whether you like it or not. Like you just said, you will not file claims you know are not patentable. Don't even try to tell me nobody in all your practice has ever brought you something you knew to be unpatentable and you had to turn them away. Unless you're 4 mo on the job that is I suppose.

As for the "law I know nothing about", I wouldn't say I know nothing about it, and your saying it is trite as well as rebutted by a great many postings on this very board. When it comes down to it, I may very well know a great deal less about it than someone who studied it for a few years and then practiced it for 30, but compared to the avg man I know a great deal.

Ttyl, doing mah workflo.

[John Spevacek]

"Does anyone outside of the self-interested patent bar really think that an economy where business methods, software, and - oh heck - 90% of what currently is patented in the mechanical and electrical arts suddenly could not be, would be any less competitive in world markets? "

Kinda reminds me of that old chestnut: "Everything that's going to be invented has been invented."

[Michael R. Thomas www.worldsonlyinventorofsignificancearguably.com]

The biggest problem with patent quality is that most of the applicants cant invent anything marketable. This coupled with denying patents on marketable things due to a paticular machine requirements and business concept denials and food configurations and recipes and franchizes ect. retard the good inventions from creation by denying financial rewards. Establishing more paterntable classifications will promote economic stimulious.

[anon]

1) In my experience, better search goes hand in hand with experience. 7+ years working in an art would make a fair searcher . The reason why PTO cant find good art is a combination of lack of time, experience, the outdated classification system, and the numbers of jumbo patents in the classification system .

2) separating search and examination is a bad idea since searching are often based on reading of the claims . Conducting examination in isolation from the knowledge of the totality of the art would eventually leads to a redefinition of PHOSITA .

3) What PTO needs now is a better or updated classification system.

[MaxDrei]

Anon, you are dead right, that separating search and examination is madness. The EPO has spent much of the last 10 years pushing through its BEST project ("bringing examination and search together"). The result is the EESR, that jewel in the crown of EPO prosecution, a first class search report to which the first O/A is appended as an annex, just a few months after the app is filed. Oh, and a question for you: this "better or updated" subject matter classification system you say that the USPTO needs urgently: Does it by any chance already exist, anywhere on the ROW surface of Planet Earth, or will creating it be just one more of stalwart and long-suffering America's national burdens this year?

[pds]

"One must write a patent application that carves around the prior art."

For being an alleged patent attorney, you are sloppy with your language. The specification is written to disclose and enable the inventor's invention regardless of the prior art. The claims are what are used to distinguish the "claimed invention" from the prior art. Although the terms are often-times used interchangeably there is a difference between "the invention," "the claimed invention," and the "patentable invention." The invention is simply what applicant believes the invention to be regardless of whether or not the invention is anticipated and/or obvious in view of the prior art. The claimed invention is defined by the claims but is not necessarily commensurate with the invention. The patentable invention is what should be allowed.

As I have opined time and time again, unless the attorney knows (i) all of the prior art and (ii) knows how the examiner will construe the language of the claims, it is no more than a shot in the dark for the attorney to have the originally claimed invention = the patentable invention. Most attorneys (rightfully) believe is that if your main independent claim is allowed in the first action, then it means you've probably claimed the invention too narrowly.

The purpose of examination is not to get allowable claims the first time around – the purpose of examination is to get claims that accuratelt reflect the boundary line the separates applicant's claimed invention from the known and/or obvious.

"The filing of an RCE is a failure, except in certain circumstances. The RCE MUST be made prohibitively expensive. This is the sure way to ensure that the case is drafted properly the first time."
Do you really, in the absence of the information I described above (i.e., the best prior art and a knowledge of how the examiner is construing the language of the claims), that making an RCE prohibitively expensive will a significant difference in how applications are drafted? My biggest problem is that examiners construe language using the broadest UNREASONABLE standard. When that happens, you usually don't realize it until after final (examiners rarely provide claim constructions in a first action), at which point you either have to take a potentially loser argument to the BPAI (the BPAI tends to bend over backward to agree with an examiner's claim construction) or amend the claim.

"and then the real world called."
I second that.

"Curious when representing a client before the USPTO you are doing so only in so far as it advances the useful arts."
Really? Once the application has been filed and published, this constitutes the advancement to the useful arts. Anything after that has nothing to do with advancing the useful arts. Instead, subsequent prosecution is all about obtaining the client's due in exchange for the already provided disclosure. So, are you saying that any prosecution after the filing of an application is beyond the proper scope of an attorney's representation of the client?

"Specifically here, you do not need actual knowledge of a specific anticipating reference, as patent attorneys love to insist. You merely need to know that the application is not novel and non-obvious."
Novelty and obviousness is defined in 35 USC 102, 103 as to both the types of references, the types of activities, the date of the references, etc. If I have no actual knowledge of the alleged "specific anticipation reference," how can I counsel a patent that the invention is "not novel" and/or "not-obvious" as you suggest? Me, I like to work with substantial evidence, not gut feelings. Any attorney that counsels that an invention is "not novel" and/or "not-obvious" without a specific reference (or public disclosure/first sale) in mind is BEGGING to be sued for malpractice.

"If a patent application is found to be anticipated in view of a piece of prior art that is owned by the assignee of the application under examination more than one year before date of the examination then a final office action should be allowed regardless of the point in the process of the prosecution."
I bet the companies who have hundreds, thousands, or even tens of thousands of issued patents and/or published applications would loooove that rule.

[Bring it to the top!]

"The purpose of examination is not to get allowable claims the first time around – the purpose of examination is to get claims that accuratelt reflect the boundary line the separates applicant's claimed invention from the known and/or obvious."

Translation:

Since I can't be stopped from overclaiming initially and since it is in my interests to do so, I will do so whether or not it contributes to a needless burden on the PTO. You have me to thank for the backlog.

Love,
pds

"Do you really, in the absence of the information I described above (i.e., the best prior art and a knowledge of how the examiner is construing the language of the claims), that making an RCE prohibitively expensive will a significant difference in how applications are drafted? "

Well, idk about drafting, but I sure do know that right before the rules were about to take effect and people didn't want to waste their RCE applicants were wanting to make deals more and more.

"Any attorney that counsels that an invention is "not novel" and/or "not-obvious" without a specific reference (or public disclosure/first sale) in mind is BEGGING to be sued for malpractice"

Should be the other way around. If an attorney does not counsel that an invention is likely anticipated/obvious when they have relevant skill in the art then they should be looking to be sued for malpractice. Your job should be honest counsel, not merely stating the blatantly apparent, i.e. pointing out what a reference says (anticipation) or what a combination of references might produce (obviousness).

"I bet the companies who have hundreds, thousands, or even tens of thousands of issued patents and/or published applications would loooove that rule."

IMO the rejection should not only be final, but any subsequent RCE's, cons, etc. based on that app should be denied. Practically fraudulent activity should be well rewarded. Shut the whole app down for good. Maybe fine the applying firm, and the assignee.

[Noise above Law]

"...but I sure do know that right before the rules were about to take effect..."

let's borrow some of 6's LOL's for that line and let it rest in peace.

"IMO the rejection should not only be final, but any subsequent RCE's, cons, etc. based on that app should be denied. Practically fraudulent activity should be well rewarded. Shut the whole app down for good. Maybe fine the applying firm, and the assignee."

Well then, it's a good thing your opinion means nothing in light of the LAW.

[Bring it to the top!]

"Well then, it's a good thing your opinion means nothing in light of the LAW."

Better hope my opinion doesn't become shared by others any time soon because if it does then the "Law" will change shortly thereafter. Seriously though, claiming things that you yourself invalidate is basically a fraudulent activity. Frankly I'm surprised that more is not done in those situations. When the applicant themselves actually does know that a claim is invalid and they apply with it anyway... well, that just reeks of fraud. Just because the applicant might have grown to a ginormous size such that their right hand doesn't know what their left hand is doing is but a minor detail and something they should deal with internally rather than foisting the responsibility on the gov, or defendants.

[pds]

"Since I can't be stopped from overclaiming initially and since it is in my interests to do so, I will do so whether or not it contributes to a needless burden on the PTO. You have me to thank for the backlog."

Sorry 6K ... 35 C.F.R. § 10.83 states that "[a] practitioner should represent a client zealously within the bounds of the law." If I have reasonable belief that the claims I present are directed to patenable subject matter, then I'm OK.

If, by chance, because I was not aware of a particular refernce or was unaware that an examiner would construe a particular manner in which I did not anticipate, then the claim is rejectable .... no big deal, I'll just amend or cancel.

6K -- this is the way it has worked since before your daddy was a gleam in your grandfather's eye. If you don't like it --- tough, because you are stuck with it.

It is simply the practice of administrative law in this country.

[An Examiner]

Bit late on this, but I just read the review.

Separation of search and examination is a horrible ideal, as most have pointed out. There is no motivation for the searchers to do a good job. This is apparent because a fair chunk of ESDs, IDSs, and PCT reports are useless.

Pre-first action interviews are generally a complete waste of time. The argument "but they save time if the first action is an allowance", is pretty dumb considering that some insanely low percentage of FAOM are Quayle's. So what happens with these is that 99% of the applications have prosecution extended because of the useless interview and 1% are accelerated, (because issuing a Quayle's is so slow).

To accelerate prosecution, I believe there should be a new, required section in our OAs. "General consideration and examiner proposed amendments". Under this section the examiner can state that no amendment to the claims would make the claims allowable and believes that the case contains no allowable subject matter. Or the examiner can propose amendments to the claims that would make the case tentatively allowable.

Motivation to get the examiner to add proposed amendments would be a new examiner rating metric (similar to counts) if the amendment is adopted by applicant and the case subsequently issues. Applicants can chose to adopt the amendment in full(2 points for the examiner), adopt in part(1 point), or not adopt at all. The case must immediately be submitted for issue (within x Time from applicant's reply) in order for the examiner to get the points, thereby allowing haggle room if the applicant adopts in part, and the examiner is the one motivated to quickly respond. Direct correlation between # of points and monetary bonuses at end of quarter.

Once submitted for issue the current (or even expanded) quality review system reviews the submitted-for-issue application. Points are docked for "issue errors" and the application is returned to the examiner. If there are no problems, then it issues and everyone is happy.