Congress Looks to Review Patent Examiner Goals

The current pending omnibus appropriations bill would provide $2.01 billion to the PTO so long as all of that money is obtained by the PTO through fees. [LINK]. As Greg Aharonian noted in his PATNEWS, none of the $800 billion bailout money is being directed toward improving the patent system.

The bill includes a statement that Congress will hold back $5 million until the PTO completes "a comprehensive review of the assumptions behind the patent examiner expectancy goals and adopt[s] a revised set of expectancy goals for patent examination."

Today, many examiners operate well over their expectancy goals — earning overtime bonus for extra work. If the time allowed is increased without increasing demands on the examiners, the result may simply be that Examiner #6 operates at 140% of his expected goal rather than 120%. I.e., more pay for the examiner without changing the examiner behavior at all. Now, I’m not opposed to increasing the examiner payscale, but if we are hoping to improve the system, any review of expectancy goals need to be coupled with a review of examination standards.

Comments

[MM's Biggest Fan]

Please let them fix the broken count system..

[Alan McDonald]

Would a $5 million holdback out of $2 billion actually force the PTO to do this review? The PTO might even decide that the cost of the review is more than the holdback.

Now a $500 million holdback on the other hand...

[John]

Across the board layoffs in the management ranks would be a great start.

[JohnDarling]

"Today, many examiners operate well over their expectancy goals — earning overtime bonus for extra work."

But, but, but, but the examiners all need more time!!!!!!!

LOL

"If the time allowed is increased without increasing demands on the examiners, the result may simply be that Examiner #6 operates at 140% of his expected goal rather than 120%. I.e., more pay for the examiner without changing the examiner behavior at all."

Ya think?

Actually, there's no increase in the bonus above 130% production. So what would happen is the examiners would simply soak up the "extra" 10% production in paid OT.

"Across the board layoffs in the management ranks would be a great start."

Actually, simply sending the legions and legions of donothingknownothinguselessdeadweightGS-15's back to full time examining would be a better fix. A little GS-15 level for GS-15 pay. Imagine what that would do to the backlog.

So simple I'm sure PTO (mis)management will never think of it.

[The Mad Prosecutor]

Just as a point of reference, isn't there no bonus about 130% production? Of course, the Examiners usually "back figure" to maximize their pay. E.g., if the Examiner wants to achieve 130% production, the Examiner figures out how many hours of overtime he can write down and still achieve that level of productivity.

Say the Examiner has 150% production for 80 hours of examining work. The Examiner is now able to claim he worked 12 hours of overtime, and still achieve 130% production. This is the Examiner's secret about which no one talks, but I have never known an Examiner who does not do it (and I know a lot of Examiners).

[bierbelly]

Where this would really help is in the ranks of relatively new examiners who are struggling to make their goals in the first place, being tasked with examining new cases to get their counts, since they have relatively few amended cases on which to rely for allowance/abandonment. The first office action takes considerably longer since you have to search first, then cobble together some crappy reason to reject the claims.

[Mad]

"The first office action takes considerably longer since you have to search first, then cobble together some crappy reason to reject the claims."

Are you an examiner? Nice to see you being honest about the rejections coming out of the office these days ;)

[stoopid question]

"Say the Examiner has 150% production for 80 hours of examining work. The Examiner is now able to claim he worked 12 hours of overtime, and still achieve 130% production. This is the Examiner's secret about which no one talks, but I have never known an Examiner who does not do it (and I know a lot of Examiners)."

Isn't this called fraud?

[j]

I'm getting the impression that the wasteful spending at the PTO (i.e. managers who won't let examining get in the way of their afternoon nap) is a large part of the root of the potential hiring freeze.

[bierbelly]

"Are you an examiner? Nice to see you being honest about the rejections coming out of the office these days ;)"

No, but been there, done that.

[JohnDarling]

"The first office action takes considerably longer since you have to search first, then cobble together some crappy reason to reject the claims."

But once you have the form paragraphs memorized, the amount of time it takes to cobble together a FAOM is considerably shortened. Especialy when you don't even bother to spell check whatever you're inserting into those form paragraphs and
consider misspellings to be indicative of record breaking quality. I know at least one stooge like that.

[curious]

Are the count requirements too demanding or not?

[weary lexicographer]

"Especialy when you don't even bother to spell check whatever you're inserting into those form paragraphs and consider misspellings to be indicative of record breaking quality."

I'm proposing a new "law" - I humbly submit that it should be called "weary's law." Here it goes: "Every internet posting that complians about another's spelling or grammar contains an error of the same type."

[6]

"Today, many examiners operate well over their expectancy goals — earning overtime bonus for extra work. "

My friend just started doing that. He's just killing himself for a few extra dollars and I doubt he'll be able to keep it up. Especially when all the amended come back from all his nonf's. Idk, overall, I'd say that it could be done, but the fact that it is him and one other guy I know that does it and they are both two who's work I disrespect quite a lot, as neither of them have a halfway firm grasp on half of the laws, or on the law on obviousness, leads me to believe that those incentives are perhaps the worst thing ever for examination in terms of quality. In fact, if there are bad actions going out, it wouldn't surprise me a whole lot if there is a strong correlation between the examiners sending them out and the ones doing lots of overtime.

Keep in mind though that small amounts of OT, like doing like 20 hrs overtime a quarter is basically just like saying you did 97% production but you choose to knock it down to 95%. I could have had like 8 hrs overtime myself when I was only over production by 9 hrs.

"Isn't this called fraud?"

No, that is pretty much how it goes, as you are assumed to have put in that work at some point in time. Which is usually the case unless you're a person that goes for allowances. The people doing 150% are people that go for getting cases allowed by suggested amendment a huge portion of the time. If they do it on first action then production goes through the roof. But, it all depends on how cooperative the applicant is wanting to be and the leniency of your spe unless you are a primary.

However, as any attorney will tell you, a case allowed on first action (even if the examiner got them to concede some scope) is somewhere around 99% more likely to be invalid.

"This is the Examiner's secret about which no one talks, but I have never known an Examiner who does not do it (and I know a lot of Examiners)."

I wouldn't say nobody talks about it. Anyone will talk about it with you. At least if you are an examiner.

"Across the board layoffs in the management ranks would be a great start. "

We are already short on mgmt in my TC anyway. Contrary to your belief spe's do actually do some stuff that is required.

"Today, many examiners operate well over their expectancy goals — earning overtime bonus for extra work. If the time allowed is increased without increasing demands on the examiners, the result may simply be that Examiner #6 operates at 140% of his expected goal rather than 120%. "

WTF now I'm showing up in the postings of the nations most widely read blog? D, unwanted attention man. I don't need a congressional review about who 6 is. See D, comments section is ignored by most people, but your actual postings?

FYI I was at around 97% last quarter iirc.

"Today, many examiners operate well over their expectancy goals — earning overtime bonus for extra work."

Also, how many are "many"? I know of like 4 examiners, out of the hundreds that I know, that are operating well over their expectancy. Some of them are in ez as arts. And, I should add, that I also know plenty (more than 10 off hand) of examiners who are hard pressed to put some things out at the end of every quarter to make 95%.

Also, I should add, the difference between 120% and 80% can very well be the spe under which you are operating.

[Michael L. Slonecker]

What an incredible "reform", $2B to be collected via yet another round of "user fees". It is quite pleasing to note that the quid pro quo (quid=disclosure and quo=grant), the linchpin of our patent system, is becoming even more "quid" and even less "quo". Perhaps the system will morph in the near future into a totally "quid" system.

There were many of us who back in the 80's were opposed in principle to a self-funded PTO. The path that has been followed since then convinces me all the more that we were jusitified in our opposition. Of course, maintenance fees only exacerbated the problem. I can only begin to wonder what other manner of user fees will the bean counters at the USPTO creatively devise?

[JohnDarling]

"Also, how many are 'many'?"

According to your boy Dudas's testimony before Congress, 60+% of the examining corps is getting a bonus for doing 110+% production.

That many.

"We are already short on mgmt in my TC anyway."

ROFLMAO

Right. Because what every TC needs is a few more QAS's.

"... they are both two who's work I disrespect quite a lot, as neither of them have a halfway firm grasp on half of the laws, or on the law on obviousness..."

This is too funny. The irony of it is almost indescribable.

[Malcolm Mooney]

6, if you could change the count system, how would you change it? And be reasonable. ;)

[T]

5 million dollars. that covers the salaries of about 25 top level people for one year. and that doesn't include the cost of outside help like they hired over 40 years ago to come up with the count system.

[Malcolm Mooney]

Dennis: "any review of expectancy goals need to be coupled with a review of examination standards"

Are there any public documents that outline how the quality of an examiner's work product is evaluated by PTO management?

My impression is that for many attorneys and agents the quality of an Examiner is directly proportional to the speed at which claims are deemed allowable. Obviously that standard is worthless.

But given that the difficulty and quality of applications received by different art units are dramatically different, it seems improper to hold all Examiners to a single set of standards.

Undoubtedly the patent bubble has had similar effects on practitioners and PTO Examiners, e.g., the profession has morphed into a contest to see who can churn work product faster, the importance of quality is diminished, amd the importance of quantity has grown.

When the Supremes deny cert in Bilski, hopefully the hissing sound, combined with the recession, will discourage the hacks and low-lifes and give the PTO a chance to clean house a little bit.

Does anything think that first year associate salaries are not going to stagnate or drop within the next year?

[6]

"According to your boy Dudas's testimony before Congress, 60+% of the examining corps is getting a bonus for doing 110+% production."

I guess that it doesn't help that I'm in a technically more complicated field. That might play into how many people I know making less than 100%.

"ROFLMAO

Right. Because what every TC needs is a few more QAS's."

I didn't say we needed QAS's, I said mgmt. As in SPE's, a buddy of mine has been speless for almost a half a year now and it is a bother to share a spe. And I also heard about other AU's that didn't have a spe here lately but I don't know how long they've been speless.

"This is too funny. The irony of it is almost indescribable."

I thought you'd say that. But there are some things that I do have a pretty good grasp on, such as 112 firsts not going out to originally filed claims and etc. Based only on NIRPA's alleged review of my work I'll say that it is decent and shows a decent handle of the laws. Oh, and you know that case about the apparatus I had been discussing so long ago? Just spoke to the attorney about the issues I brought up in the other threads and ivo those he know believes he'll abandon the case. I think I have a decent handle on things even if you contest that being so.

MM, how would I change the system? I'll address that later, I have a meeting in a few minutes.

[Willis]

I think the assertion that changing production goals would not change the behavior of Examiners who are already operating at 120-130% of their production goals (whether true or not) misses the point. The point is that 90% of the Office Actions that are sent out of the USPTO are crap. If you are at 120% and producing a good work product, then more power to you. If you are at 120% and producing crap, then how do you get that person to change. Likewise, if you are at 90% and producing crap you should also have tO change.

That being said, change in quality will never happen unless production goals are cut by 25% to 50% with no reduction in pay. IN THE COMPLEX ARTS, IT TAKES TIME TO (1) READ AND UNDERSTAND THE INVENTION AND CLAIMS; (2) PERFORM A GOOD THOROUGH SEARCH; AND (3) FORMULATE A WELL THOUGHT OUT REJECTION THAT FOCUSES THE ISSUES.

Examiners do not have the time to do a good job, and therefore do not do a good job.

[JohnDarling]

"I didn't say we needed QAS's, I said mgmt. As in SPE's"

Right. Because all those QAS's and "special project" GS-15's are so busy planning the TC holiday party that they can't transition over to a SPE position. Where would they find the time to sign all of those OA's that they wouldn't bother to read anyway?

"Oh, and you know that case about the apparatus I had been discussing so long ago?"

No.

"Based only on NIRPA's alleged review of my work..."

Well, if NIPRA would share his alleged review of your work, I'm sure we could easily confirm that you have a decent handle on things over there.

LOL

[Znutar]

"My impression is that for many attorneys and agents the quality of an Examiner is directly proportional to the speed at which claims are deemed allowable. Obviously that standard is worthless."

For me, length of the OA tends to scale with quality. The lowest quality is assigned to those OAs that are nothing but form paragraphs with a single poorly crafted sentence thrown in like "See Lee et al. (US xxxxxxx)."

On the other end of the spectrum are those rare instances where
1) the examiner explains, using words, why terms or features in the reference are deemed to read on terms in the claims where the parallel isn't immediately apparent;
2) gives a thoughtful explanation of why portions of the claims are not being given patentable weight (partial credit for even indicating which portions are not being given patentable weight);
3)shows that material deemed to be inherent in a reference necessarily flows from the reference instead of being a mere possibility (partial credit again for even indicating that a claim limitation is deemed to be met inherently);
4)can articulate how one reference is proposed to be modified according to the teachings of a second (no credit for merely saying it can be modified); and
5) can articulate a reason why the primary reference is better for the modifiaction (no credit for parrotting the benefit of a feature as within the secondary reference from which it was found.

Points are heavily deducted for species election requirements drawn to every drawing, or to every claim because hell if I'm going to examine more than one claim per application.

Points are awarded for noting support in the references for each limitation of the dependent claims.

Points are also awarded for citing more than the two references used in the rejection, evidencing that a search was actually conducted.

Points are deducted for dingaling 112 rejections (e.g. there's no antecedent basis for "the" circumference of the circle).

Points are awarded, in subsequent OAs, for addressing arguments made in a reply (e.g., the secondary reference doesn't teach X)where the argument remains pertinent even though there are new grounds of rejection.

Points are deducted for not allowing an amended application until after the RCE fee is paid.

Points are deducted for suggesting that one of ordinary skill in the art of computer networks, having just read an application about computer networks, would conclude that a server might mean a waitress and java might mean a cup of coffee. And analogous leaps of logic.

Basically, quality scales with detail and reason. If the rejection is truly meritous, give me solid reasons to bring to the client to end their fruitless quest. I'm fine with that. If the floorwaxer is so obvious, don't give me a rejection where you pin the tail of a donkey on a picture frame because the donkey's tail is useful to swat flies.

[Leopold Bloom]

That's good stuff, Znutar.

"Points are awarded, in subsequent OAs, for addressing arguments made in a reply (e.g., the secondary reference doesn't teach X)where the argument remains pertinent even though there are new grounds of rejection."

I'm afraid I've never seen this happen. But I'm encouraged that you apparently have.

I also deduct points for cut-and-paste subsequent office actions in which the rejections aren't even edited to account for amended claims, canceled claims, or the like. Or when entire sections that have been obviated (e.g., a double-patenting rejection overcome by an accepted terminal disclaimer) are left in, because it's too much trouble to selectively cut-and-paste.

But I would be happy to live with carelessness and sloppiness if the search were decent and the cited art relevant. Frankly, given how often I see plausible rejections in PCT written opinions out of the EPO, compared with how rare those are in US office actions, I have little confidence in claims that are ultimately allowed. Yes, those allowed claims have some value, but not as much as they could, and should.

[fisher ames]

The GAO's 9/2007 report on the USPTO's hiring efforts "recommended" what is now being mandated by Congress. Also remember what the dept of commerce snarked back to the GAO in response to the GAO's draft report ... something along the lines of: Oh thanks for stopping by and everything, but our proposed new rule packages are going to make all our dreams come true.

[Malcolm Mooney]

Willis: "The point is that 90% of the Office Actions that are sent out of the USPTO are crap."

What art unit? That's certainly not the case in chem/bio. I may disagree with some of the legal conclusions reached (in fact, clients pay me to articulate forceful disagreement) but for the most part the Office Actions are well-reasoned. I'd say that a substantial fraction of the OAs are more detailed (or verbose) than any Response that I'd care to write. And it's not cookie cutter stuff. It's mostly accurate work, that forces the client and myself to do some serious thinking about how to respond.

I've noted here before my issues with the chem/bio unit. They relate mainly to consistency between the Examiners, i.e., one Examiner taking a hardline approach to certain claims while another examiner is more "friendly" (without either examiner necessarily being more right or wrong in his/her application of the law).

Perhaps the PTO should take the chem/bio art unit as an example of an art unit that is mostly doing things right. Of course, that won't stop the whining from practitioners in other art units who really care only about one thing.

[Analysis should be explicit]

"For me, length of the OA tends to scale with quality."

Similar to that discussed above, my measure also involves length of the OA. The length, however, is reduced by any form paragraphs or word-for-word reproduction of the claim language.

What is left should be original Examiner analysis. Providing more than a page worth of original Examiner analysis puts an Examiner in the top 50%. However, a good office action should include at least a couple pages of original analysis that construes the language of any terms/phrases of particular interest and specifically identifies, where within the prior art, each of the claimed limitations are found.

By comparison, the OA I reviewed today had, at best, a single paragraph of orginal Examiner analysis.

[Malcolm Mooney]

"Providing more than a page worth of original Examiner analysis puts an Examiner in the top 50%. However, a good office action should include at least a couple pages of original analysis"

Many claims require far less than two pages of analysis.

[Malcolm Mooney]

"By comparison, the OA I reviewed today had, at best, a single paragraph of orginal Examiner analysis."

Let's see it.

[JohnDarling]

If examiners are given one, or two, or however many, more hours, minutes, days, to examine applications, my prediction is that it will not improve the "quality" of Office actions one bit. Examiners will simply dispose of less applications.

If the PTO's average expectancy is 19.5 hours/BD (which is the assumption (mis)management bases the production system on), increasing that to 20.5, or whatever, is not going to improve Office Action quality. The examiners are still going to be pumping out the typical, "Well, none of the references show feature X, but the examiner takes Official Notice that In re Boilerplate is widely regarded as standing for the proposition that it is inherently obvious to routinely optimize everything through experimentation."

Examiners don't need more time for that. In fact, they need less time for that.

Simply alloting more time is not a "fix" of the count system. It needs to coupled with actual reforms.

The current state of examination is exactly as others have described it. Some PTA brain washed newbie examiner who has been taught nothing but "quality = reject, reject, reject" does a succession of text searches of a couple terms from the first independent claim, cobbles together a combination of the 2 or 3 references that floated to the top of the search results, clacks away on the keyboard, is very careful not to include the word "allow," or any of its variations, in the Office Action and turns it in. It is reviewed by a primary or SPE, who does a quick scan to make sure nothing is indicated as allowable, and it is immediately signed and then mailed out.

After a few rounds of this, the applicant gets fed up and appeals. Then a conference is held. The conferees include the newbie examiner. And two uselessdonothingknownothingdeadweightGS-15's, like a SPE/SPRE/QAS/etc., neither of whom has 1) read the application, 2) the applied prior art, 3) the prior Office Actions, and 4) the prior responses. Then a "decision" is made.

And the process starts all over again.

Simply alloting more time for the examiners to perform this "process" is not fixing anything.

[JohnDarling]

"And it's not cookie cutter stuff. It's mostly accurate work, that forces the client and myself to do some serious thinking about how to respond."

Let's see it.

[EG]

"I also deduct points for cut-and-paste subsequent office actions in which the rejections aren't even edited to account for amended claims, canceled claims, or the like."

Leopold,

Amen to that. It's frustrating to have to point out (sometimes repeatedly) that the point being made in the new Office Action was addressed by the prior response. Just getting an Office Action that uses grammatically coherent sentences (never mind the typos) would be helpful to. Instead, you often have to guess as what the Examiner is driving at, including how references are being combined, what is the proposed modification being proposed, where the reference (specifically) teaches the various elements/features of the claim(s), etc. And if you're lucky, provide verifiable factual support for statements that are made in the Office Action (includng stuff that is alleged to be "well known in the art").

Znutar: I concur with Leopold, well done. Very nice list and explanation.

[Znutar]

"Points are awarded, in subsequent OAs, for addressing arguments made in a reply (e.g., the secondary reference doesn't teach X)where the argument remains pertinent even though there are new grounds of rejection."

Let me rephrase that. "Points will be awarded..."
I can't say that I've never seen it happen in 10 years, but I can say that I can't cite to any recent example.

I do want to publically acknowledge the one examiner I dealt with about 9 months ago that called me, said he had a 102 reference, but suggested a dependent claim would be allowable. After reviewing the reference I had to agree with him. Upon further review, I determined that several of the dependent claims were also allowable, and we talked about it, and he agreed to most, though not all, so we took what was allowed, and it was the most pleasant and professional experience I've had. Sad to see a species on the edge of extiction.

[6]

"can articulate a reason why the primary reference is better for the modifiaction"

That isn't even necessarily the case so why should someone be ready to articulate that? Whether or not a primary is better for the modification has a low priority on the obviousness meter, it may very well be that the primary is worse off, and it may very well be that the instant invention sux and is worse than the primary ref but that doesn't mean that it wasn't an obvious modification.

"Points are heavily deducted for species election requirements drawn to every drawing, or to every claim because hell if I'm going to examine more than one claim per application."

No, points are added.

"Points are deducted for dingaling 112 rejections (e.g. there's no antecedent basis for "the" circumference of the circle)."

strike deducted and put in added.

On that note I was talking to an attorney just the other day about this kind of a 112 which probably looked to him like it was unimportant. However, it isn't always unimportant, and that particular issue that the 112 was based on determined the difference between a 102 and not getting a 102.

"Points are deducted for not allowing an amended application until after the RCE fee is paid."

You mean points aren't deducted. We earned the abandonment, you have no right to a third examination on the merits if properly finaled and the PTO is not the place to come to for a hand out ya bum. It's not like we're an administrative agency that took away something you had, like a drivers license, and are specifically directed by the statute to give it back to you when you meet some conditions and we refuse. You're asking us to conduct a time/resource intensive examination for free. You are in fact worse than the bums on the street, at least they only ask for a quarter or "a minute" as opposed to something valued at ~2000$+ that takes around 4-8 hrs min.

And JD if NIRPA was correct and did share an entire review of a correct assumption of who I was I might have to hire a cheap hitman because we all know who RA is. Oh, and don't screw with the party. I don't even think our holiday party was all that great this past year, I didn't even go, it was that much sux. We all went on a boat the year before that, it was pretty cool. Expensive for us, but pretty cool.

[Just an ordinary white rabbit(TM)]

Dear Malcolm,

Re: “6, if you could change the count system, how would you change it? And be reasonable. ;)”

Good, now you are trying to be funny, again. Welcome back. Stick to joking – that’s what you are best at – the original “Blog Jester.” No, Really, I mean it. It’s hard to be funny.

*****

Dear Mr. 6,

Now it’s your turn.

[Znutar]

"That isn't even necessarily the case so why should someone be ready to articulate that? Whether or not a primary is better for the modification has a low priority on the obviousness meter, it may very well be that the primary is worse off, and it may very well be that the instant invention sux and is worse than the primary ref but that doesn't mean that it wasn't an obvious modification."

I want you to go before Congress and say that. Every cause needs a poster child and you're my candidate for why the system needs reform.

[6]

It appears that D's wonderful site has decided that my post on improving the sys should be deleted. Let me bottom line it.

I would do research on the subject as congress mandated. If I had to guess this would lead me to increase time in some AU's and decrease it in others. Also, more claims longer/longer spec = more time. 15 pages max without extra time, and probably 3/25 claims. If I were congress then I would try my damdest to simplify patent law where ever possible. And I would implement a barebones AQS immediately to improve everyone's production by at least 10% because cases would go to allowance much faster (or never get filed). I would also end, to the best of my ability, drafting in a vacuum and drafting by attorneys not skilled in that art. Finally, I would also end attorneys beefing up the spec/deps with their own knowledge/research as opposed to what the applicants themselves genuinely brings to the table with the exception of background info. Which, as a matter of fact, now that I think about it, is where all that beefing up of specs/deps should be going anyway, in the background.

Oh, and once the recession gets into swing a bit more and drives down the backlog I would up the examination fees (and especially RCE fees) significantly (2k?) and probably increase time for examination across the board with an emphasis on technically challenging/complex arts.

[Michael Valentine Smith]

I see that evil JD is back. And, based on a few reasonable, even pro-examiner, posts a few days ago, I thought that he took my advice & finally got some psych help & got on some meds. Too bad...

As to the real posts here, what Znutar is very reasonable over all. And I agree with his/her assertions as to what should be in a good action. Unfortunately, all too often examiners leave these out (for a variety of reasons)

I do not agree with some SWAGs that say 90% are "bad". Based on what I see (400-500 actions across the TC a year), a more reasonable amount is about 20% are bad (clearly erroneous - refs not showing limitations, off-the-wall 112s, allowing claims that should be rejected, rejecting claims that should be allowed, etc.). I would say another 20% or so are lacking in some aspects (like not explained well or not all remarks responded to - things that are "wrong" but do not as badly impact the applicant & prosecution).

What causes all the bad actions? Lack of time, lack of or bad training, unreasonable supervisor, general incompetence or just not caring. Most of the reasons you will get for anyone in about any job (examiner,attorney, engineer, president, etc.) not doing what they should be doing.

How to improve things?

Simply adding hours to the bds will not do it. There also needs to be more accountability as to the quality of actions (particularly non-finals & finals) to go along with the extra time. Without out that accountability, things will not improve much with extra time. TANSTAAFL

Now, as to the statements about 60+% doing 110+%, which may be technically true but it is a fudged #. As many of you know, junior examiners need to do about 107% to get a promotion (simplified explanation). This helps the % getting 110%.

Secondly, a LOT of examiner do a LOT of voluntary overtime (VOT) to get their 110% bonus. Or they take annual leave to make their 110%.
Why? Because it keeps their SPE happy & off their neck. (An examiner is rated "outstanding" in production for 110% while a SPE needs her/his art unit to be about 117% to be be fully successful). Financially, most (all?) examiners are better off working OT instead of getting the 110% as, for the same amount of production you get more $ for OT.

That covers the high points. Later.

MVS

[Malcolm Mooney]

"And it's not cookie cutter stuff. It's mostly accurate work, that forces the client and myself to do some serious thinking about how to respond."

Let's see it."

-------------

Here's a bunch of ten of the most recently issued patents found searching for "recombinant enzyme" :

7,495,152 Identification and characterization of a novel alpha-amylase from maize endosperm
7,495,151 Protein kinase stress-related proteins and methods of use in plants
7,495,150 Method of increasing seed oil content in plants
7,495,149 Limnanthes oil genes
7,495,148 Double recoverable block of function
7,495,147 Neuregulin-1 transgenic mouse and methods of use
7,495,115 Steroid conjugates, preparation thereof and the use thereof
7,495,112 Isoindoline compounds and methods of making and using the same
7,495,102 Azaindole inhibitors of aurora kinases
7,495,092 Compositions comprising promoter sequences and methods of use

Now go to public PAIR, JD, and look at the claims and prosecution histories of these patents. Like 7,495,151. Look at the Sept. 18 2008 OA.

I pulled these without much hesitation. This is the world of adults. There are certainly a few wankers out there sitting in cubicles and filing crap biotech applications and probably some of those get assigned to the most dubious Examiners in the art unit. But what do you think we'll find if I do the same sort of search for, e.g., "computer toolbar"?

[Just sayin']

"Does anything think that first year associate salaries are not going to stagnate or drop within the next year? "

Does anything put the lotion on its skin?

Objectifying people is a sure sign of sociopathic behavior.

[Just sayin']

One thing to improve the system is to eliminate all the sideline watchers a squawkers who can't seem to take a breath from offering suggestions for "improvement" and realize that patent law is not some kind of perfect system. Also, its inherently an overhead activity, which means that unless the underlying business is robust, there is not going to be input.

What would really improve the system, is for people to stop squawking and get involved in some productive activity. I realize many of those in the puppet show don't know what productive activity is, but it means getting your hands dirty doing some real work.

Unless the U.S. is vigorously engaged in manufacturing, the need for the patent system is greatly diminished.

Now get out there and get to work.

[Just sayin']

Mooney, I couldn't imagine that you would pull and comment on patents like that unless you were not directly involved in patent law.

Which kind of makes you a wanker.

[Just sayin']

"Perhaps the PTO should take the chem/bio art unit as an example of an art unit that is mostly doing things right. Of course, that won't stop the whining from practitioners in other art units who really care only about one thing."

You are truly the most annoying "person" ever.

[Malcolm Mooney]

Brayin' "I realize many of those in the puppet show don't know what productive activity is, but it means getting your hands dirty"

You're just trying to make Nancy jealous.

[Just sayin']

Sure signs that you are losing it:

1) nobody understands what you are saying or thinks its very funny except you (high Dennis Miller factor)

2) you start believing your own BS

3) you entertain images of sexual activity involving corpses

[Malcolm Mooney]

I've been contributing to blogs and newsgroups on the Internet for almost twenty years now. I can honestly say that I've never seen a troll as miserably obsessed with another commenter as Brayin'/Eye/CaveMan is with yours truly.

Congratulations ...?

[Analysis should be explicit]

"I'd say that a substantial fraction of the OAs are more detailed (or verbose) than any Response that I'd care to write."

"Many claims require far less than two pages of analysis."

Let's see your 1 page responses. How much do you bill your clients for that?

"Let's see it."

Show us your well-written OAs from the chem/bio unit.

[English optional]

"I would also end, to the best of my ability, drafting in a vacuum and drafting by attorneys not skilled in that art."

I would fire all Examiners that cannot write at a 12th grade level. Unfortunately, that would increase pendency by about 5 years in certain art units.

[anonymous]

I actually find that more concise and to-the-point responses are superior to longer responses with lots of B.S. included.

[Realy hard to draft these claims]

Claim 1 of U.S. Patent No. 7,495,150:

1. A method of increasing seed oil content in a plant, the method comprising introducing into the plant a nucleic acid molecule which reduces or eliminates the expression of a nucleotide sequence comprising SEQ ID NO: 1 where the reduction or elimination of expression of said sequence results in increased seed oil content, such that seed oil content in the plant is increased when compared to a plant not having the nucleic acid molecule and selecting a plant having said increased seed oil content.

Essentially, the method is introduce a nucleic acid molecule having a particular sequence into a plant and then select the plant .... whoohooo ... a 10 year old could write that claim. If the Examiner doesn't find SEQ ID NO: 1, then the claim is allowed.

Nice example of high-level work at the USPTO.

[Realy hard to draft these claims]

All the allowed claims of 7,495,112:

1. A compound, or a pharmaceutically acceptable salt or solvate thereof, wherein the compound is: ##STR00034## ##STR00035##

2. A compound, or a pharmaceutically acceptable stereoisomer thereof, wherein the compound is: ##STR00036## ##STR00037##

3. A pharmaceutical composition comprising a compound of claim 1 or 2.

4. The pharmaceutical composition of claim 3, which further comprises a pharmaceutically acceptable carrier or excipient.

5. A dosage form comprising a compound of claim 1 or 2.

6. The dosage form of claim 5, which is suitable for oral or parenteral administration.

Brilliant ... absolutely brilliant. Takes a whole lot of legal gymnastics to get those claims allowed.

BTW - no art rejections in the prosecution, only a 112, first paragraph rejection.

"forces the client and myself to do some serious thinking about how to respond"
hahahahahahahahahahahahahahahahahahahahaha

[Analysis should be explicit]

"I actually find that more concise and to-the-point responses are superior to longer responses with lots of B.S. included."

Of course, if the response is too long, there is a good chance that the Examiner may decide not to read it.

Reminds of the quote made by Denzell in Philadelphia: "Explain this to me like I'm a six year old, okay?" All prosecutors should heed that advice when responding to Examiners.

[Realy hard to draft these claims]

Three for three

Claim 1 of U.S. Patent No. 7,495,092:

1. An isolated nucleic molecule comprising the nucleotide sequence set forth in SEQ ID NO: 6, wherein the nucleic acid molecule is operably associated with a heterologous nucleic acid of interest.

Woohooo -- another brilliantly drafted claim. Must have taken a lot of brainpower to figure out how to draft this -- there are just so many nuances to consider.

[Realy hard to draft these claims]

Four for Four

Claim 1 of U.S. Patent No. 7,495,152:

1. An isolated nucleic acid comprising a nucleotide sequence encoding the alpha-amylase having the amino acid sequence of SEQ ID NO:2.

If these randomly selected biotech patents represent the "high-level" work being done with biotech patents, then I can understand where moon unit gets his hubris.

[6]

"I actually find that more concise and to-the-point responses are superior to longer responses with lots of B.S. included."

That is for sure. 100% certified fact. That's not even opinion. That's fact bithes.

"I would fire all Examiners that cannot write at a 12th grade level."

That's why you're not a manager. Apparently we need a diverse work environment and we cannot discriminate against people based on nationality and firing en masse over "bad english" would probably spark a lawsuit or two, or a couple hundred.

[2600examiner]

"Say the Examiner has 150% production for 80 hours of examining work. The Examiner is now able to claim he worked 12 hours of overtime, and still achieve 130% production. This is the Examiner's secret about which no one talks, but I have never known an Examiner who does not do it (and I know a lot of Examiners)."

You're almost there. Why would the examiner go for the 130% when they can go for 95%+max OT? 130% gets you a 9% bonus for 30% more work, whereas overtime gives you $$$ in at least a 1:1 ratio to production quantity. If you want that 'outstanding' review maybe you give them 110% (see my blog http://ptoexaminer.blogspot.com/2009/02/23-month-review.html). There's really no reason to do 130%.

[2600examiner]

"I actually find that more concise and to-the-point responses are superior to longer responses with lots of B.S. included."

I doubt I've ever written anything longer than 15 pages.

[2600examiner]

"I would fire all Examiners that cannot write at a 12th grade level. Unfortunately, that would increase pendency by about 5 years in certain art units."

With a group of new hires that I was the training assistant for, the ones with the worst English were actually the best.

[bsn]

Yes, but we want people who (a) are good searchers; (b) properly understand the law and their job; and (c) have a good command of written English.

While we're dreaming, I'd like a pony.

[bsn]

Sorry, I should add (d) hasn't already been snapped up by a higher paying job elsewhere. I'm not saying no one meets (a), (b) and (c), just that if they do they're unlikely to stay long at the PTO.

[Alun Palmer]

Mr. Mooney, your recombinant enzymes sound complicated to me as an EE, but your computer toolbar should be compared with, say, snake oil in the biochem art. We have plenty of things in the EE art that are complex enough. GUIs aren't generally one of them, and games of 'my art's harder than your art' are futile and tend to confirm some of what your usual detractors say about you.

[John]

In the firms I worked at over the years, I found that many bio people had a social malfunction of some kind, and a huge PhD sized chip on their shoulder like MM seems to have. Not the majority, but greater than an insignificant amount.

Why he denigrates EE as an art is beyond me.

[Bamram from Europe]

How come that there is no interesting case law these times ? Does the CAFC have an Obama pause ? Or don't you have the time to dig into recent decisions ?

[Pat E.]

The Examiner has a choice of working extra hours or %, in order to get "Fully Successfull" rating. That is my understanding.

[Ron Slusky]

Much of the bad examination that was so well summarized by, for example,

Znutar | Feb 25, 2009 at 04:25 PM and
JohnDarling | Feb 25, 2009 at 05:45 PM

is much easier to correct than one might think.

It is a profound management truism that "What gets measured gets produced," and examiners only get dinged for allowing something that they supposedly should have rejected; not the other way around. It's no surprise, then, that cases get rejected and re-rejected without proper basis and without meritorious arguments from the applicant being ignored.

Slusky's Solution: Augment the quality review process that also dings examiners for rejecting cases that they should have allowed and watch what happens. Again, my friends, what gets measured gets produced. What will happen is that meritorious applications will get allowed because examiners will be just as afraid to reject a case as they are to allow one. The number of RCEs, continuations and appeals will go down; and the backlog--so infamously blamed by Examiner Dudas on (in part) applicants and their attorneys filing supposedly poor patent applications--will dramatically decrease.

The key is to have such an effort headed up by someone who knows what makes for a proper examination, who loves this kind of work, and who is outraged to see how the examination process has deteriorated over the last decade or so. Sadly, this would probably have to be someone brought in from outside the Office--someone driven by principle and not by bureaucratic agendas.

[Just Visiting]

"Isn't this called fraud?"

Claiming that you worked hours that you did not work is fradulent even if you have enough counts to cover the extra hours. You cannot work overtime within your 40 hours per week.

[egd]

"Isn't this called fraud?"

Not if it's the government.

[John]

"The key is to have such an effort headed up by someone who knows what makes for a proper examination, who loves this kind of work, and who is outraged to see how the examination process has deteriorated over the last decade or so. Sadly, this would probably have to be someone brought in from outside the Office--someone driven by principle and not by bureaucratic agendas."

Ron, that would need to be forced upon them - from the outside. Unfortunately, a political hack will be installed and nothing will change.

And the answer is and has always been simple! - hold examiners to a reasonable actions per disposal statistic, and enforce it.

[t.b.]

I think the patent situation is going to change soon. I'm watching all the area patent law firms, we have quite a few, scramble to find work.

I'm just graduating from law school this May and not finding patent jobs. The Career services guy called my technical background an A+ for patent work. However, me, the editor of our law review - a chemist, and many other I.P. students aren't getting work. The firms where we clerk are sending us away - sorry we don't have work, can't hire you. We go to a law school with a very well respected I.P. program.

My feeling is that patent filings are dropping like a rock. One firm went from 30 by this time last year to 6 this year. The economy + Bilski + KSR are a tipple whammy to patent filings.

Also I believe that a lot of applications will go abandoned as firms can't pay for the fees, and they go under, or they look at Bilski and pull the patent. Unless Bilski is overturned, then people will figure this out and apps will dry up. Just look at the BPAI's results for 101 cases - almost 100% negative for the patent owner.

Hope I'm wrong, - would you like a patent with those fries?

[Bilski is overblown]

"Also I believe that a lot of applications will go abandoned as firms can't pay for the fees, and they go under, or they look at Bilski and pull the patent. Unless Bilski is overturned, then people will figure this out and apps will dry up. Just look at the BPAI's results for 101 cases - almost 100% negative for the patent owner."

Every claim I've seen that has gotten Bilskied has easily been fixed with minor amendments to the preamble. In most instances, the claims can be fixed with just one or two words. The Examiner will even tell you what words to add. Bilski is little more than a PITA.

Suggestion -- if you go to the USPTO don't drink the Koolaid if you ever want to work in private practice. Get your experience, weather the recession, and get out -- the sooner, the better.

[concerned examiner]

To commenter at Feb 26, 2009 at 09:32 AM. With second pair of eyes, it is a quadruple whammy. I have a devil of a time getting cases allowed because of skeptical SPEs and primaries. If the rate of applications goes down, the PTO will be able to work off the backlog for a couple of years, then after that, some of the examiners may join the practitioners in the unemployment line. I've been at the PTO long enough that I would have a hard time going back to my previous industry.

[Michael Valentine Smith]

re: Ron Slusky post @ 8/10 on 2/26

OPQA DOES review IPR cases (finals & non-finals); in about the same #s as allowances. And the examiners DO get errors for them. While it is true that an examiner can afford more IPR errors than allowance errors & still be outstanding/commendable/etc. because of the way the error rate is determined they still ARE "dinged" for errors for bad rejections (for allowance the error rate is (# errors/total allowances) & error rate for IPR cases is (# IPR errors/total # actions)).

Determining if a case "should have been allowed" is not very easy in review as it would require a complete researching & reworking of the case. Usually not very practical, particularly when the reviewer may not be 100% conversant in the art being claimed in the case. So, probably the best we (PTO) can do is determine when there are bad rejections (& there are way too many; see my earlier post).

The REAL reason for what you perceive about "only allowance errors" is the the allowance error rate is what gets the PR & the IPR error rate (published as about 8-10% error rate; personally, I think it is higher in real life) is just thrown in as one more stat.

Hope this clear that up (again).

MVS

[One who knows]

No one has mentioned that the percent production is not a number that determines how much work an examiner actually does or how many applications are processed. Percentages are numbers that are easily manipulated.

An examiner can increase their percent production by taking training, annual leave, or having a large amount of "other time." "Other time" is given for administrative, training, leave, and other non-examining duties. An examiner can build a base of "other time," submit a couple of counts and be at 110% plus production for a biweek without too much trouble.
This does not mean that the examiner examined more applications that biweek or did anything more to reduce the backlog. Some examiners have SPEs who are liberal with "other time" while others do not give much "other time" at all.

The production system is broken and it needs to be fixed. Look at the GAO reports. The Dudas quote about 60% of the examining corps making over 110% is probably true, but how much of that was generated by taking leave and using "other time" to pump up those numbers?

On the other hand, without "other time" examiners are charged with 80 hours of examining time for every 80 hour biweek. That is 100% of their time. If you had to bill 80 hours for every 80 hours you worked, how much overtime would you have to work just to keep up with the mundane administrative tasks, like filling out your own time sheet? You would be working more than 40 hours a week just to keep up with all of the ancillary administrative tasks that you have to do. Meanwhile, this extra time would either be unpaid or you would have to work paid overtime and work on a few more cases to make up for the extra production you are charged with if you get overtime pay.

All of this is part of why so many examiners leave the agency and others seem to be cutting corners. A reality-based production system is in everyone's best interest.

[Malcolm Mooney]

"Realy hard to draft these claims"

Easily the most retarded series of posts here since JustBrayin's last drive-by. The issue wasn't "how hard it is to draft the claims" (what does that even mean?). The issue was the quality of the Office Actions and the Examiner's ability to challenge the applicant in a legally correct and meaningful fashion.

My original point stands. I certainly have complaints with the PTO, but overall I think the Examiners in the ChemBio art unit are doing their job as well as can be expected. Moreover, you have my evidence.

"Mr. Mooney, your recombinant enzymes sound complicated to me as an EE, but your computer toolbar should be compared with, say, snake oil in the biochem art."

Really? Why is that?

[Malcolm Mooney]

"If the rate of applications goes down, the PTO will be able to work off the backlog for a couple of years, then after that, some of the examiners may join the practitioners in the unemployment line."

I hope this is not presented as some sort of justification for jacking up the allowance rate.

[anonymous]

"However, as any attorney will tell you, a case allowed on first action (even if the examiner got them to concede some scope) is somewhere around 99% more likely to be invalid."

Actually, any attorney would tell you the opposite: that the claims are likely to be unduly narrow, given the USPTO's total aversion to allowance on a first action.

[Malcolm Mooney]

"your recombinant enzymes sound complicated to me as an EE"

Just fyi, any decent high school student in a well-funded school can make a novel recombinant enzyme. It's not complicated. Would it be obvious and/or useless? Very likely. But it's not complicated and hasn't been for at least a couple decades now.

[Nate Levin]

In my view, the posts by Znutar and John Darling tell it like it is, or at least as I am experiencing it. Thanks, guys.

[Malcolm Mooney]

somebody upthread: "However, as any attorney will tell you, a case allowed on first action (even if the examiner got them to concede some scope) is somewhere around 99% more likely to be invalid."

anon responds: Actually, any attorney would tell you the opposite: that the claims are likely to be unduly narrow, given the USPTO's total aversion to allowance on a first action.
----------------------------

Anon is correct, of course, although I'm not sure what is meant by "unduly" narrow. See, e.g., the first patent in the list I pulled yesterday. Narrow composition claims, limited to a particular species. Are the claims "unduly" narrow? I doubt it. They are at least as narrow as they should be.

[suhanshu]

The patent expectancy goals were set over 35 years ago where an Office action consisted mainly of filling out a short form, the patent application conatain a spec with 5-10 pages and about 20 claims.

Today's applications typically contain specification with 20-50 pages and 50-75 claims. An Office action today involves a detailed written analysis applying a myraid of laws--including claim interpretation. How can an Examiner expect to do a credible job given the same amount of time? This is not even taking into consideration that the number of patent's to search in approaching 8 million, the need to search non-patent databases as well as PG pubs.

Before you critisize the Examiner, spend some time being one. We are currently hiring.

[With increased pay comes increased responsibility]

"Before you critisize the Examiner, spend some time being one. We are currently hiring."

Go back on this board, and there have been plenty of attorneys that have sympathized with the plight of the Examiner who has a lot of things to do with a little time to do it. For this reason, many attorneys have advocated that Examiners be provided more time to examine and better training.

However, most attorneys already know the feeling of having a lot to do with little time to do it. It is called life in private practice. The difference is that when we do a bad job, the client fires us. However, when an Examiner does a bad job, they may get an abandonment or an RCE.

That being said, we will enthusiastically support (i) an increase in examination time, and/or (ii) an increase in hiring, and/or (iii) an increase is salaries at the USPTO. We'll also support fee increases to fund these activities or forcing Congress to let the USPTO keep all the fee receipts they receive. In turn, we expect better examination.

[Malcolm Mooney]

"However, most attorneys already know the feeling of having a lot to do with little time to do it. It is called life in private practice. The difference is that when we do a bad job, the client fires us."

So are the crap claims that are currently being Bilski'd examples of "good job" or "bad job"? They look like really really bad jobs to me. If I check PAIR will I see that the Powers of Attorney for those cases was recently trained?

These are rhetorical questions. My point is that certain commenters here seem to expect Examiners to take the patent rules and laws extremely seriously in spite of the fact that applicants plainly treat the rules and laws with contempt. And then they whine when their claims aren't rubber stamped yesterday. A more realistic view of the relationship between clients and attorneys is that clients want their attorneys to file the crap they give to their attorneys to file.

Also, is Withincreasedpay's assertion that the PTO never fires Examiners? Or never threatens to fire Examiners?

[Malcolm Mooney]

Correction: "changed" not "trained" in first paragraph of my comment.

[1 year Examiner]

I've seen a lot of crappy Examiner responses as well as a lot of crappy Practioner responses in my short time with the PTO. (I'm a 2100 Examiner)

Examiners have an impossible job--search the entire universe for prior art in every language everywhere. And, if you can't find all the elements in one single document exactly, determine if you can make a "reasonable" 103 rejection with a few references (but not too many).

After you make your rejection, read the blogs and get blasted by the patent bar for being an incompent dolt for sending out an unreasonable, poorly written rejection.

Lay off guys. Geez. I know you guys and gals have your own set of problems (unreasonable clients, etc.) but please don't take it out on us. It just doesn't help the process.

[1 year Examiner]

I forgot to add: If you decided to allow, just hope there isn't a 102 that you missed floating around or that you get on the front page of slashdot for issuing an "obvious" patent.

[An Examiner]

Znutar said:

"1) the examiner explains, using words, why terms or features in the reference are deemed to read on terms in the claims where the parallel isn't immediately apparent;"

We have a similar point system for attorneys. You get bonus points if you actually read and comprehend the reference(s) and the subject matter in a first reply, among other things.

[Znutar]

"If you decided to allow, just hope there isn't a 102 that you missed floating around or that you get on the front page of slashdot for issuing an "obvious" patent."

Best play it safe then and reject, reject, reject. Quit living in fear, do a good search with the time you have, allow what should be allowed, and move on. And quit reading blogs if you don't like being lumped in with so many of your peers who would gladly trade workmanship for bonuses.

And I'm not going to stand here and defend those peers of mine that are just as bad, for surely there are attorneys that can't write a complete sentence and can't articulate a coherent thought (I read the prosecution histories), but this thread is about examiner goals and a fair topic for discussion is the workproduct that is a function of the present goals, and while many examiners see fit to at least put in parentheses something like "box 40" or "col. 8 line 16" after each claim limitation, there are a staggering number that simply assert it's all taught somewhere between col. 1 line 1 and col. 14 line 45, and even that is more than some will offer. So yes, I read and comprehend the references, but then 9 times in 10 I still have to get out the divining rods, the secret decoder ring, brew some tea and study the leaves... Please, throw me a bone, drop the cloaking device, let me phone a friend, I'd like to buy a vowel. This isn't poker, smile and show me your cards.

[JD is the bestest patent attorney in the whole wide world, yes he is!!!]

"Quit living in fear, do a good search with the time you have, allow what should be allowed, and move on."

. . . and therein lies the problem JD, uh I mean Znutar, the vast majority of the time (85%-90%+) there is nothing to indicate as allowable, at least not with the first action . . .

[JohnDarling]

MostVapidStooge says:

"Now, as to the statements about 60+% doing 110+%, which may be technically true but it is a fudged #. As many of you know, junior examiners need to do about 107% to get a promotion (simplified explanation). This helps the % getting 110%.

Secondly, a LOT of examiner do a LOT of voluntary overtime (VOT) to get their 110% bonus. Or they take annual leave to make their 110%. Why? Because it keeps their SPE happy & off their neck. (An examiner is rated "outstanding" in production for 110% while a SPE needs her/his art unit to be about 117% to be be fully successful). Financially, most (all?) examiners are better off working OT instead of getting the 110% as, for the same amount of production you get more $ for OT.

That covers the high points."

Technically true? But fudged?

ROFLMAO

The numbers are the numbers. In other words, they are what they are. Your lame attempts at spin are not going to change them. No organization in the world that has set performance goals for its employees is going to lower those goals when 60+% of the employees can not only meet them, but can exceed them by 10+%.

I guess that's why you're only a mid-level-(mis)management stooge. You are the living embodiment of the Peter Principle.

So examiners have to do about 107% to get promoted? And other examiners have to work extra to get bonuses? Wow! That's grossly unfair! Actually expecting examiners to do what they'd have to do in any other job in the world? That is truly shocking!!!!

All of you have my deepest sympathies.

So much for the "high points."

MostVapidStooge also says:

"Simply adding hours to the bds will not do it. There also needs to be more accountability as to the quality of actions (particularly non-finals & finals) to go along with the extra time. Without out that accountability, things will not improve much with extra time."

Seems to me I made that exact point in my post the Stooge was responding too. Thanks for agreeing with me. You know what they say about blind squirrels. And mid-level-(mis)management stooges.

Malcolm,

I checked out that OA you referenced. Impressive. By far better than anything I see on a daily basis. But I guess my response is: so what? As you yourself noted, you could easily do a search and find OA's of terrible quality.

If all of us could prosecute protein fragments and nucleic acid molecules, we'd have no debate. Unfortunately, not all of us are prosecuting in that niche.

The fact remains though that the examiner production system is not going to be changed. And that is simply because the current (mis)management has ZERO ideas. They don't know anything else. It's the same reason they cling to the stone age docketing policies and procedures they have. They "grew up" with the systems they have, they've never experienced or tried anything different, and they have ZERO interest in changing them.

Carry on.

[Michael Valentine Smith]

JustaDickhead,

Glad to see that you admit to being a blind squirrel. I'd say that we should start calling you Rocky, but you are not that intelligent. You're more a Bullwinkle.

And, you REALLY need to get those meds to balance out your extreme mood swings. Going thru the change at your late age can be quite stressful (particularly the hot flashes, I hear.).

Seriously, now go crawl back under your bridge where you belong. You are nothing but THE worst troll on this blog. Always critical & condescending without ever even trying to provide a helpful or positive contribution. The complete definition of a troll.

MVS

[JohnDarling]

"Glad to see that you admit to being a blind squirrel."

Your reading comprehension is beyond poor. That's what happens when your whole "career" consists of inserting misspellings into form paragraphs. I'm sure you're rated "outstanding" at that job function. You've perfected it.

"Going thru the change at your late age can be quite stressful (particularly the hot flashes, I hear.)."

That the best you got?

Weak. Did you get that from a form paragraph?

"Always critical & condescending without ever even trying to provide a helpful or positive contribution."

And your contributions are what? You love to post your anonymous boasts that you've asked PTO (mis)management the "tough questions." Even assuming that were true, what's that accomplished?

"Seriously, now go crawl back under your bridge where you belong."

So says the anonymous wonder.

I'm free.

You're an anonymous cowardly slave from the ranks of PTO-mid-level-(mis)management stoogehood.

Don't forget that.

[LAYERS OF MANAGEMENT]

Fundamental problem with the PTO is the LAYERS OF MANAGEMENT. Unlike a law firm partner they DON'T GENERATE REVENUE. All SPE, QAS, SPREs... are simply creating issues in order to justify their position.

For example, in regards 101 subject matter, there are around 20-30 GS-15s in EACH Technology Center, doing "reasearch" in that area. This is ridiculous, none have law degrees and in no way will be in front of any court presenting cases. While they draw 130-160K salaries, doing "reasearch" that does not generate any form of revenue.

This is problematic to both the Examiners and Applicants.
1) Level of micromanagement becomes high. An Examiners has so many people looking over their shoulder, that at some point the Examiner stops caring. For example, an Examiner can allow an application or reject. If he/she allows there will be greater scrunity from these GS-15s, so he/she will continue to reject with pointless or needless rejections. On the other extreme, an Examiner will allow everything under the sun, he/she figures if I am going to be screwed anyway, might as well take it easy.

2) Applicants can't get clear idea on ways to resolve issues. You talk to an GS-15, he/she will ALWAYS give answers in the most convoluted, drawn-out and prosecution prolonging way. Then when the applicant does what they want, they will find something else wrong in the response. Examiners find this frustrating when they agree and understand the applicant's position.

SOLUTION: ELIMINATE LAYERS OF MANAGEMENT

1) DEMOTE any GS-15 that does not perform a critical function. By "critical" it means directly managing Examiners (who generate revenue).

2) All others should have production/examining function component. For example, a QAS should spent 40 hrs in bi-week examining and the other 40 hrs doing other duties. So, atleast they generate partial revenue.

I encourage inventors, agents, attorneys to proactively demand this from the new administration. As a single Examiner I cannot change this alone.

[Willis]

I prosecute applications in the electrical and computer arts. I often receive Office actions that simply cut and paste the claims into the action and, after each clause in the claim, cite a portion of the reference (column and lines, pargraph #) that allegedly teach the limitation defined by that clause. This would not be so bad if there was actually some discernable relation between the cited portions of the reference and the claim language. The cited portions of the reference often cover several pargraphs that seemingly have no relation to the claim language.

I think the Examiner has a tough job, if done correctly. I don't expect perfection. For example, if the Examiner performs a summary, perfunctory analysis in rejecting the depdendent claims, I can accept that. But, is it too much to ask for a semi-well-reasoned analysis of how the Examiner is interpreting the independent claim(s) and the cited prior art so that I have an inkling of what hte Examiner is thinking?

Simply cutting and pasting claims and citing columns and line numbers after each claim clause is not an acceptable rejection to me.

[Michael Valentine Smith]

"Layers",

You are right in that there are too many 15s that are of very little help to anyone. I would say at least 30% of the SPEs & half the SPES/QASes should not be in their positions. They should go back to examining (preferably as a junior) or leave. (Your estimate of 15-20 per TC working on 101 is somewhat exaggerated, though. Still there are too many working on it that do not know what they are doing. And the 101 issue is too overblown as it is.)

However, do not assume that all are bad. There are still a lot of SPEs etc. that DO care & are knowledgeable & try to do the best that they can with the resources available.

And the excessive review of allowances is one of the biggest problems the office has. 2nd pair of eyes HAS to go (& when Doll goes hopefully it will too. It was his idea.)

The "reasoning" behind the excess reviews is because a few patents issued that many in & outside the office considered "bad" & it hit the proverbial fan. "Bad" patents make the news. "Bad" rejections do not. And all the outside or upper management appears to worry about is the allowance error rate & bad PR, not bad rejections. If we get examiners making good 1st actions with the best art, chances of "bad" patents will go down and the overall work product will improve dramatically. We just need them to get the emphasis on improve 1st actions & finals.

MVS

[BigGuy]

"Simply cutting and pasting claims and citing columns and line numbers after each claim clause is not an acceptable rejection to me."

I've seen the extreme case of this on several occasions as well - I'm talking about those rejections that are not simply based on strained interpretations of the claims or the references, but appear instead to be completely arbitrary - as you say, with no discernable relatinship between the cited portions of the reference and the claim language. I suspect these are simply done to kick the can down the road a ways, and are constructed to be superficially plausible-looking enough to get past any cursory "review". (And no, Malcolm, I'm not going to post an example; if you want to believe these don't exist, that's fine with me.)

These things are easy enough to respond to, and are invariably withdrawn, but at added cost and delay for the applicant and increased backlog for the office. To the examiners out there, are there any negative consequences to this behavior, and do you recommend doing anything more than filing a normal reply when faced with one of these?

[JohnDarling]

"You are right in that there are too many 15s that are of very little help to anyone."

So says the number 1 donothingknownothinguselessdeadweightGS-15 of the bunch.

You should know.

[a chembiotech examiner]

BigGuy,

If you want to make things happen at the PTO it is very easy - merely call the layer of mgmt above the examiner's spe, i.e., the work group director or go higher if you please. Ask them to review certain parts of the action with you on the phone, point out the most eggregious erros and then tell them you want an explanation as to what exactly your filing and prosecution fees pay. Tell them applicant is pissed and considering abandoning their application and the US patent system all together. Then, as soon as you hang up the phone call the spe. Tell them what you just told their boss. Tell them you shouldn't have to be making these calls and you are an unhappy customer. If all applicants getting subpar rejections were to call in this way it would become very clear to PTO who the unprofessional examiners are and give them an opportunity to create an evidence based record of these examiners shortcomings. This would in turn go a long way to improving quality and in the long run in fact improving morale as hopefully the good for nothing examiners would either start taking the job with the seriousness it deserves or get the axe.

[Malcolm Mooney]

"The "reasoning" behind the excess reviews is because a few patents issued that many in & outside the office considered "bad" & it hit the proverbial fan. "Bad" patents make the news. "Bad" rejections do not."

I've said it before, and I'll say it again: this is not an "arbitrary" bias. Below a certain level, a given rate of "bad" rejections is perfectly acceptable. First, "bad" rejections are easier to fix than "bad" patents. Second, any unfairness or harm caused by a "bad" rejction is extremely limited compared to that caused by the issuance of a "bad" patent.

Think of the DMV. Probably there are some drivers out there who are very upset because they keep failing the drivers exam. They are certain that it's unfair and who knows, maybe they are right. But the general public doesn't and shouldn't give a crap. On the other hand, if a DMV office starts granting to licenses to alcoholics who are openly drunk during their drivers exam, it's going to be in the news.

I'm sure you understand why.

[An Examiner]

Layers said:

"Fundamental problem with the PTO is the LAYERS OF MANAGEMENT. Unlike a law firm partner they DON'T GENERATE REVENUE. All SPE, QAS, SPREs... are simply creating issues in order to justify their position. ...

SOLUTION: ELIMINATE LAYERS OF MANAGEMENT

1) DEMOTE any GS-15 that does not perform a critical function. By "critical" it means directly managing Examiners (who generate revenue)."

Uhhhhh. The PTO has two layers of management between an examiner and the Commissioner of Patents, the SPE and the TC Director. Some people consider Peggy as a third layer of management, so I'll give you 3 layers of management. Knowing this, and compared to other federal agency's entry level positions, it's evident the patent examiner has the least layers of management between them and the President.

Furthermore, your opinions and statements about what happens at the PTO are gross mis-characterizations.

Not to mention some of the ideas about SPEs on here are absolutely ridiculous. SPEs are overworked liked dogs because there's a huge lack of them at the moment. For example, my SPE signs cases for 16 people. That's about 200 OAs he's signing every 80 hours. That comes out to 2.5hrs to familiarize himself with the application and make sure all the rejections are reasonable. And that's assuming he performs no other management functions. In reality it's about 1 hr/OA, which is far too little.

IIRC, the target goal for each SPE is managing 8-12 examiners.

[BigGuy]

"On the other hand, if a DMV office starts granting to licenses to alcoholics who are openly drunk during their drivers exam, it's going to be in the news."

One sure-fire way to reduce the number of licensed alcoholics, if that's your primary goal, is simply to fail everybody (except perhaps biotech practitioners?). Or maybe just fail everybody a random number of times, hoping that some applicants will go away. Neither of those is likely to be the solution with the lowest total cost to society, though. Neither approach is likely to reduce the lines at the DMV office, either. But it might increase application fee revenues.