David Kappos was sworn in on August 13, 2009 as Director of the USPTO. His address was directed primarily to USPTO employees who attended the ceremony.
My pledge to you is that I will listen, and I will work with every single USPTO employee as part of your team to understand these issues and address them so that you can reach your maximum effectiveness and achieve everything you want in your careers.
For example, I know many of you have concerns about the count system. We’re going to address the count system.
I know many of you who telework or want to telework have concerns about travel requirements We’re going to address that issue. This is a Trademarks issue; it is a Patents issue; it’s an agency issue.
I know many of you are concerned about the time your managers are able to spend helping you learn the refinements of the patent laws and guiding you in applying 35USC, 37CFR and the MPEP in your work. We’re going to address those issues too.
… The list goes on and on, as you all know better than I do. I’m here to address the whole list.
Broadly, Kappos indicated that he will focus on “reducing the backlog of unexamined patent applications, cutting pendency dramatically, working off the mounting appeals backlog[,] improving re-exam processing”, and “moving the USPTO to more sustainable [financial] footing.” Referring to the recent authorization to use trademark funds to pay for patent operations, Kappos indicated that he does not want to “actually USE that authority if there is a way to avoid it.”
Kappos also indicated that his focus will be on the “U.S. innovation community”; limiting his own overseas travel in order to serve “the best interests of our country.”
Wow, he sounds like he’s going to take on the actual problems here in the US PTO….. hopefully he’s not just blowing smoke to get the job like some of his superiors.
“Even if the Applicant isn’t entitled to the original claims, they are entitled to the Examiner citing the best art of which they are aware. sadly, too many exmainers don’t try to find the most applicable art in view of the specification and instead cite “any art””
I wouldn’t say it’s sad. It’s human nature to find the shortest distance between two points. Therefore, if the examiner can find decent art on broad claims, then that is all that is necessary to complete the work. A better understanding, for example by reading and understanding the specification in detail, may lead to a more insightful search for the real invention. Searching is not easy though, especially considering the vast amounts of information to wade through, so perfection is a far-reach. Each amendment, even if it is just to get around “any art,” draws out the real invention. Then the search is refined in view of the new understanding of what exactly the applicant wants protected. That is why so often, it takes 2 or 3 actions, or an RCE, to have a quality patent.
“With all due respect to the good attorneys out there, but sometimes you guys draft the claims far too broadly.”
of course. we don’t do searches. until they are mandated, we aren’t going to draft narrower claims on a hunch. see above.
“Often the examiner will use bad art even if the underlying invention appears allowable simply because the claims read on just about anything … it seems like most attorneys don’t put any serious effort into amending until after final.”
Examiners need to cite the best art in view of the allowability of which they are aware.
By citing “any art,” a minor amendment overcomes the art.
The examiner cites the better art in the final, and then we’re willing to amend the claims more substantially. That’s why you’re seeing more substantial amendments at final because the first action is waste. see above.
Of course, examiners sandbagging by saving the best art doesn’t help the backlog, but it ensures they get a quick count for the non-final and ensures get an extra two counts from the RCE.
Even if the Applicant isn’t entitled to the original claims, they are entitled to the Examiner citing the best art of which they are aware. sadly, too many exmainers don’t try to find the most applicable art in view of the specification and instead cite “any art”
With all due respect to the good attorneys out there, but sometimes you guys draft the claims far too broadly. Often the examiner will use bad art even if the underlying invention appears allowable simply because the claims read on just about anything. This is where interviewing should come in to clear this stuff up quickly, but I get the impression that a lot of attorneys won’t respond to first nonfinals with amendments that change the scope very significantly. Maybe you guys are just pushing some of the work down to junior associates, but it seems like most attorneys don’t put any serious effort into amending until after final.
“I’m not buying the notion that examiners can force you to amend claims.”
I agree. Given many examiners’ “reject until the claim is 2-3 pages long so I won’t get written up for an improper allowance,” the days of making a token amendment (or a series of token amendments) are gone. They won’t get the case allowed and only encourage poor examination.
6 of the 10 were re-opened after the pre-appeal conference. A couple of those were followed by new non-final rejections that were no better than the earlier ones, but a few have been allowed. 4 were re-opened after my appeal brief. I’m still waiting for the subsequent office action on two of them.
I realize that this is just a small sample of the overall system, but I’m not buying the notion that examiners can force you to amend claims. It’s certainly true that the office is driving some small inventors to despair (read: run out of money) and abandon their applications, but applicants with more patience (and a little more money) can ultimately prevail. In the meantime, I expect that the pressure on examiners to allow long-pending cases will increase.
Leopold: how many of those 10 were resolved by the pre-appeal brief request for review or resolved after you filed your brief?
“but the appeal backlog is terribly long, as Dennis showed in an article a couple of months ago”
Sure it is, but of the last 10 appeals I’ve filed, NONE have gone as far as an Examiner’s answer.
“appeal early and often”
but the appeal backlog is terribly long, as Dennis showed in an article a couple of months ago
I’m particularly pleased that “improving re-exam processing” made it into his top 4. Besides being the most important to those being sued on invalid patents [and having no current timely or cost-effective defense] it is by far cheapest and easiest of PTO problems to fix.
“There’s a way around it – appeal early and often. I don’t think I see the point of amending “to a point of worthlessness.” Is that really what your clients want?”
good call. appeal. that’s what tons of applicants are doing now because it’s more cost effective to appeal than to burn through an RCE or two just to get claims that are unduly narrow
“Examiners, with very few exceptions, are going to find an excuse to reject the claims and force us to amend them to a point of worthlessness before allowance. There is just no way around it.”
There’s a way around it – appeal early and often. I don’t think I see the point of amending “to a point of worthlessness.” Is that really what your clients want?
Here’s wishing Kappos the best. I remember Jon Dudas’s nomination as a nonevent, with most people commenting on how he seemed competant to preserve the status quo. I see significantly more attention and expectations laid on Kappos. I hope it works out.
BTW – you guys are masters at getting off topic. Maybe Dennis needs to set up some message boards?
broje:
the patent office’s aversion to allowance is a separate problem from unnecessarily receiving 1-2 good rejections based on 102 art because the claims were too broad to start;
the vast majority of applicants’ intuitions about prior art cannot be trusted, because they aren’t “leaders” or they are reading limitations into the claims that just aren’t there, or they are blinded by the thought of cashing in;
and patent attorneys can’t be trusted either because they’d rather err on the side of being overbroad rather than narrowing the claims on a hunch that 102 art exists;
the examiners will still have their responsbility, but the process will be ahead a few steps;
the negotiation analogy doesn’t work because, if you are truly entitled to patent scope and the USPTO isn’t averse to granting proper scope, then you don’t need to file claims with 102 problems
“If they don’t find anything better in their search and they agree with the applicant, allowance.”
This will not happen. Examiners, with very few exceptions, are going to find an excuse to reject the claims and force us to amend them to a point of worthlessness before allowance. There is just no way around it. I think that the results that we have seen from the Accelerated Examination Program support this point.
More to the point, patent prosecution is a negotiation process. Have you ever participated in a negotiation? If you have, then you know that if you start out asking for exactly what you deserve, then you will, inevitably, get less than what you deserve. But that is what the law requires Applicants to do.
I think that the dilemma of Applicants being ignorant of art is way overblown. Nor is it fair to say that Applicants bury their heads in the sand. Leaders in technological fields are generally aware of the closest art and, in most cases, authored it. Similarly, patent attorneys drafting and prosecuting applications for years develop a fairly accurate instinct for what is patentable, and do a good job of getting very close in most cases.
The real problem is the pressure that Examiners are under to reject Applications, and force amendments of claims until they are so narrow and practically worthless that no one will care that they got allowed. The Office is too afraid of criticism, and Examiners are afraid of allowing any claims that are of sufficient value that they might be enforced and come under scrutiny.
Forcing Applicants to perform searches and prepare examination support documents is not a step in the right direction. It is just a way of trying to push responsibility off of the Examiner’s shoulders and onto the Applicant’s.
“Isn’t that what you really want? Just let the Examiner be a searcher, and have the Attorney do the hard part of the Examiner’s job.”
No. I just want the Applicant to get the filed claims where they’d be after 1-2 wasted office actions. The examiners will still have to do a search. If they don’t find anything better in their search and they agree with the applicant, allowance. If they don’t find anything better, but they disagree with the applicant, they can reject. If they find something better, they may still allow or reject. The point is to avoid the useless 102 rejections that happen all too often because applicants bury their heads in the sand.
“You could change it so that the Exmainer just sends all search results to the Applicant without an Office Action and requires the Applicant to write an Exmiantion Support docuemnt explaining how the claims distinguish over the references. Isn’t that what you really want? Just let the Examiner be a searcher, and have the Attorney do the hard part of the Examiner’s job.”
I agree with this idea. Much of the prosecution is wasted on a pointless back and forth between attorneys who don’t consider a reference fully and examiners who don’t really understand the complexities of legal argument. And in the end the BPAI ends up rejecting on totally different grounds.
I would be interested in having the examiners comment on what changes need to be made to the classification system.
“If this should somehow come to be, the next logical step would be to fire all examiners.”
No. The next logical step is business as usual, except that the claims are 1-2 amendments ahead of the current curve.
… but wait. That means less $$$ for us patent attorneys!!!!!”
You could change it so that the Exmainer just sends all search results to the Applicant without an Office Action and requires the Applicant to write an Exmiantion Support docuemnt explaining how the claims distinguish over the references. Isn’t that what you really want? Just let the Examiner be a searcher, and have the Attorney do the hard part of the Examiner’s job.
I wish Mr. Kappos and his administration luck and success. The Office faces formidable difficulties, and real solutions will not please everyone. Hopefully Mr. Kappos will at least consider all stakeholders’ postitions, compromise where possible, and explain himself where it is impossible. In such ways progress is made.
(Except in Healthcare reform, which is a confounding and destructive quagmire, escapable only upon the Rapture.)
That would be a USEFUL project the know nothing SPEs could work on! Sorry I feel like yelling. I feel better now, but I am back and here to stay!
“If this should somehow come to be, the next logical step would be to fire all examiners.”
No. The next logical step is business as usual, except that the claims are 1-2 amendments ahead of the current curve.
… but wait. That means less $$$ for us patent attorneys!!!!!
Jules, there once was a time, long ago, when there was RECLASSIFICATION (yelling directed at PTO management – not you).
“Now get to work searching [find out how to use the classification schedule and make your peers correctly classify!!!]”
I second that! But what about those subclasses with 4000+ references? Even the best examiners can have trouble with that, no?
Anonymous, I am assuming that when people talk about a search requirement, they actually mean a requirement to distinguish the claimed invention from the closest prior art (correct me if I am wrong). Certainly the standard corporate applicant that files a multitude of applications on related technology would not have to repeat searches for every single application. Applicant is aware of the prior art based on the previously examined applications for their similar technology.
Then, if I am correct that the “search requirement” would really be a requirement to distinguish the closest prior art, how does one determine if the submission by applicant is sufficient? Of course, there is already supposed to be a background section, but vigorous use of “applicant admissions” by the PTO has resulted in a bare-bones approach to the background for many practitioners. Seems to me that determination of whether the search or the distinguishing statements submitted fulfill the requirement would be extremely subjective and make such a requirement untenable.
And as a former primary examiner, nothing makes me more mad than some lazy examiner who refuses to search the relevant art. An amendment in response to art will only define over that art. If it does not, the practitioner obviously is at fault. The most relevant reference will result in an amendment with an appropriately narrowed scope.
Now get to work searching [find out how to use the classification schedule and make your peers correctly classify!!!]
Anon: “Just require some sort of pre-filing search and analysis that doesn’t make patent practitioners pee their pants in fear of admissions and inequitable conduct.”
If this should somehow come to be, the next logical step would be to fire all examiners.
Anonymous,
I believe the opposite. There should be no duty to search and no duty to provide any references to the patent office. Every other patent office around the world appears to work without these requirements.
“Simplest way to do this IMHO is to increase filing and maintenance fees.”
Just require some sort of pre-filing search and analysis that doesn’t make patent practitioners pee their pants in fear of admissions and inequitable conduct.
The all-too-common practice of filing overbroad claims (with the applicants burying their heads in the sand) leads to 1-2 wasted office actions, at least.
Sure, there’s no current duty to perform a search. But the USPTO and Congress could (and should) create one.
Let’s be honest. Decreasing pendency will require something other than 18-month publication. Becuase really, what examiner feels comfortable wasting their time with an application before 18 months, when a new piece of 102(e) art can pop up in the middle of their examination while they get no count for incorporating that piece of art? A couple back-and-forths after that 18 months gets right up to 30+ months before issuance. IT IS ONLY NATURAL. So let’s be realistic, and let’s not just be a yes-man to Secretary Locke by skirting the real issues. Now if you want to focus your attention on those art units with 40 and 50+ month pendencies, then be my guest, but I have a feeling that would be focusing on the minority rather than the big picture. Everyone knows the production system needs a full overhaul, and fast.
Rapidly learning (ha ha), the best way is to make all the useless SPEs (likely over 90% of them) examine applications full time.
Increasing fees beyond cost of living is not necessary. And how does no option to re-activate the patent if payment goes more than a year past due make thing better financially? Not saying whether this is right or wrong for other reasons.
“…people will file fewer of them.”
because we all know that filings themselves are evil and we will increase revenues with less filings…
/sarcasm off
Kappos’ remarks available in detail at:
link to uspto.gov
I found this section particularly interesting:
“To meet Secretary Locke’s direction to me, I will be HERE at the USPTO. I will minimize overseas travel, and focus domestic travel on listening to the U.S. innovation community and discussing our agenda with them.
Most importantly, I plan to focus my energies on understanding issues here at the USPTO and addressing them aggressively.”
Would I be reading too much into these comments in thinking that this portends a US first attitude, and accommodating world integration only on a secondary basis?
“moving the USPTO to more sustainable [financial] footing.”
Simplest way to do this IMHO is to increase filing and maintenance fees. Raise the price of a patents, and people will file fewer of them. Perhaps filing fees could be increased moderately, and maintenance fees increased dramatically at, say, the four year mark with no option to re-activate the patent if payment goes more than a year past due.
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