The USPTO uses a count system as one way to measure patent examiner productivity. Examiners receive one count for sending out an initial office action and a second count when the case is “disposed.” As you might guess, a case is disposed of when it either issues as a patent or is abandoned by the applicant. However, many folks are surprised that the applicant’s filing of a request for continued examination (RCE) also counts as a disposal. As the chart shows below, this count incentive may well be driving a flood of RCE filings. The system also provides some incentive for aggressive restriction practice that forces the applicant to divide a single application into multiple applications. Notably, (1) the examiner does not receive any extra credit for examining a larger or more complex application and (2) the eventual divisional application is ordinarily routed to the original examiner who can do the search more quickly and still get the same counts.
One of the initial missions of new PTO director David Kappos is to rethink the count system and to figure out a way to ensure that examiners have “the time they need to do their job properly” and which also “incentivizes compact prosecution.” Giving a hint at the final solution, Director Kappos also suggests that the count system should encourage “the use of interviews.” The eight member task force includes four examiner union (POPA) representatives and four PTO managers – perhaps ensuring that the solution will not be a dramatic shift. [Quotes come from an internal PTO communication.]
Add your proposal below:
Hmm, that’s funny, failing to submit a working model is the very area where many applicant’s applications fall flat on their face when such a requirement is implemented.
link to legallaw.sosblog.com
I’m glad Rader wouldn’t say what Judge Radar would.
But by all means, Rader, please feel free to actually comment on the substance.
…thought not.
Now let’s find another wreck!
Actually Noise that isn’t what I’d say.
It seems the spamfilter was trying to prevent you from posting something I wouldn’t say.
Mixing cause and effect is obviously your forte, Spam Police,
Judge Radar covers the microphone and continues to his fellow judges:
What is up with that clicking coming from the MM trollbot in the corner? Has that damm thing gotten stuck in its gratuitous mode again?
“My final post in the series of the hypothetical discussion with Judge Radar cannot get past the spam filter and I cannot figure out why.”
Um, maybe because you already posted 6 comments in a row? Quit being a comment hog.
Judge Radar replies:
Of course, this is elementary. The Office is expected under Law to fulfill their duty of examination. This duty is made clear in at least sections 35 USC 131, 35 USC 111 and 37 CFR 112 of the Law and Rules. Only examiners wearing a shield of persistent ignorance would not understand this. Your point is accepted.
My final post in the series of the hypothetical discussion with Judge Radar cannot get past the spam filter and I cannot figure out why.
A lesser paraphrase:
Your Honor, given that there does not exist a golden patent difference based on how a patent proceeds through the Office, whether by special expedition or normal channels, would it be fair to say that what the Office demands of an applicant in this specific guidance noted above would somehow be mirrored in the normal course of examination for any application?
Dennis:
A graph showing the number of BPAI judges compared to the number of applications filed (year to year) over the past 20 years would be interesting.
“In some TCs, new grounds of rejection in an Examiner’s Answer is expressly forbidden.”
So new grounds are either signed off on without any review whatsoever, or they’re expressly forbidden.
Surely what I proposed is better.
“I agree that reopening after appeal brief should require director approval, but as to SPEs poring over each and every final, I don’t see how that would ever be feasible. If a SPE has 20 examiners, each doing an average of 8 cases every 2 weeks, that’s 160 cases he’s got to look at. Even if he does nothing but review cases, that works out to 30 minutes per case. That’s not much time”
I see this “SPE has 20 examiners” post quite frequently. How many SPE’s are really reviewing the work of 20 junior examiners? My guess is not that many. And the real problem is that most of the SPE’s are painfully ignorant of the law and the MPEP. So even if they had more time, I’m not sure it would improve the quality of the review.
“…, and SPEs do have other things that they have to do.”
I’m aware of that. But should SPE’s really be spending time arranging office moves, i.e. musical chairs for the examiners’ offices, and arranging the TC holiday party? Can’t they find some other people to do that?
Part III
NAL:
Your Honor, let’s look at the guidance offered examiners at MPEP ______ (this section is tripping the Spam Filter)
708.02
subpart (a)
subpart (I)
subpart (H)
subpart (3)
Third Part
NAL:
Your Honor, let’s look at the guidance offered examiners at MPEP 708.02(a)(I)(H)(3):
Part III
Part III
NAL:
Your Honor, let’s look at the guidance offered examiners at MPEP 708.02_a_I_H_3:
“The preexamination search must also encompa$$ the disclosed features that may be claimed. An amendment to the claims (including any new claim) that is not encompa$$ed by the preexamination search or an updated accelerated examination support document (see item I) will be treated as not fully responsive and will not be entered.”
Part II
NAL:
This finding applies to whatever path a patent application takes through the Office examination system. The Office has created special examination paths, notably the accelerated examination path. The requirements for accelerated examination do NOT create a patent with heightened powers of validity and thus can be viewed as merely representing the thoroughne$$ and quality of examination expected for all applications, but in an accelerated manner, with the applicant taking up some of the substantial examination effort.
It has been put forth that this sharing of the examination load has been a precursor of the Office’s intent to eliminate its burdensome dealings with the Examiner’s union, but again, that point can be taken up in a separate discu$$ion.
In this discu$$ion, we will focus on the level of quality examination that the Office indicates is nece$$ary. As the baseline has been established that a granted patent has the same expectation of quality no matter the path through the office, we can look to some of the requirements outlined for accelerated examination as telling factors of what is expected from any examination of an application.
Let’s at this point focus specifically on the question as to what must be examined. Our opponent has indicated that he is free to only examine the claims of an application and with the ble$$ing of his SPE, can ignore the rest of the application. We advance that by law, this position is not tenable.
It is an undeniable fact that an applicant may modify and even add claims during the prosecution of his application. It is also undeniable that no new matter may be added during prosecution. Would it be a truism then, that the sum total of what an applicant can obtain a patent for is included in the application as initially submitted? Everything that can be examined is present at the beginning.
Judge Radar:
Agreed. It is clear that an examination must be made of the entire application. Ignoring any portion such as the specification or drawings and only focusing on another portion such as the claims is clearly ludicrous. Likewise, it is a quite evident po$$ibility, I would say probability, that claims may be modified or added during prosecution.
Please continue.
For some strange reason the following story is getting caught inthe spam filter. Let’s do this in parts.
Part I
Let’s look at a hypothetical exchange:
NAL:
Dear Judge Radar,
As the Law currently allows, there is no such thing as a Gold-Plated patent. Any patent has the same presumption of validity as any other patent. The merits of this presumption may be debated at another time and place, but for our purposes, this can readily be agreed upon.
Judge Radar:
Agreed. Please continue.
So 6 is now postulating that he has to actually read the specification, (rather than just the claims) even though he admits this in trying to distort my view and paint himself as correct.
I will take this as an affirmative acquiescence. Thank you for admitting your error 6.
Care to try the new matter angle now that you have admitted that you are indeed responsible for actually examining the entire application?
“Has any TC Director ever refused to sign off on new grounds in an Examiner’s Answer?”
In some TCs, new grounds of rejection in an Examiner’s Answer is expressly forbidden.
I agree that reopening after appeal brief should require director approval, but as to SPEs poring over each and every final, I don’t see how that would ever be feasible. If a SPE has 20 examiners, each doing an average of 8 cases every 2 weeks, that’s 160 cases he’s got to look at. Even if he does nothing but review cases, that works out to 30 minutes per case. That’s not much time, and SPEs do have other things that they have to do.
Well, you actually surprised me. I’d give that a C+ for thoughtfulness. But you are way confused about who is “tasked with interpreting the ‘laws’ at issue.” I’ll give you a hint – it’s not you. See, they wrote the MPEP for a reason.
“My professional obligations trump conflicting client requests every time.”
Alright thoughtful.
Ok, as a matter of fact, so do mine.
It all boils down to how you interpret “the law” and how it is in practical effect meant to be applied. There is no court in this land that I believe would buy NAL’s interpretation. If she stood before Rader and said “Your honor I submit that the office is responsible for examining the application in its entirety down to the last detail”. He would simply respond to her, as he did the folks in Tafas, “Well, yes, but don’t you think that this applies only within reason? Would it not be reasonable for the office to read the specification, gauge what they feel the claims are setting forth as an invention, and focus mainly upon the claimed invention to the detriment of the myriad nuances contained within the jumbo specification at issue?” And of course, if she were speaking to Rader in front of a packed courtroom she’d say “Why yes” to which she might attach some like “but still the application must be examined in its entirety.” To which Rader would reply “Would that not kind of defeat the exact same reasonableness you just agreed to?”. To which she would reply “Why no your honor, I don’t see anything contradictory”. To which he’d reply “thank you ms. I think we’ve heard enough” in his usual dismissive voice. And if you listened carefully to the audio recording you might have heard him whisper to a fellow judge “fasten your seatbelt” before having talked to her.
“What trumps your boss’s instructions in your world? A bigger boss’s?”
Nothing until that boss is replaced.
link to en.wikipedia.org
Though not formally observed is, for all practical purposes, observed.
“but I bet it happens a lot less than you think”
Not according to the telephone in my office. Though that isn’t to say they grossly cross the line all the time. There simply isn’t a reason to do it all the time. It isn’t an everyday thing, and I don’t think that it is. That said, it certainly isn’t unheard of for me to hear it 2 or 3 times a month. The situation usually goes something like this.
Attorney: So what we’re thinking is we’ll take the application in this direction.
Me: Ok sounds good, but I can’t promise you much. You’re essentially changing the invention completely around and it will very likely read on totally new art.
Attorney: Yeah I know, the art in this area is tight, but it’s what the client wants so I’m just trying to do my job.
A few weeks later a final issues with new art that reads specifically on the newly worded “invention”.
“From what you’ve told us, it’s pretty clear what would happen if you told your boss, I’m sorry, but I can’t do as you suggest because it conflicts with the MPEP”
Let’s be 100% clear. What would happen is he would ask me exactly why I was thinking in such a rigid, formalistic way, and, after my reply that I had simply left my head at home that morning, then he would say “ok, do it your way”. And then, a few weeks later I’d be at around 50% production (maybe less, but generously speaking) then I’d be written up for it. When I persisted, I’d be fired later for still being at 50% production.
So let’s be clear, no manager is going to force it upon someone to not “examine the application”. They’ll simply laugh and let production do that for them. But they will make it very clear that they aren’t requiring anything of the sort.
“I don’t mean that to be condescending (although sounding that way is probably unavoidable); it simply means that appeals to professionalism are a complete waste of time because there are no defined standards of professionalism for use as a reference.”
I disagree, there are accepted and well defined standards. They’re simply not where you think they are/should be. You aren’t the one tasked with interpreting the “laws” at issue. Just because you choose to not recognize the accepted and well defined standards doesn’t mean that the rest of the world doesn’t. They in fact do.
That depends JD, am I feeling too lazy to produce a reference?
6 Dude,
Drinks on you again this week – you got your a$$ kicked by the Chick.
Usual place and time.
“It is common knowledge that attorneys do this as a matter of course.”
Are you taking Official Notice of this?
“By the by NAL, would you jump off a bridge if your client told you to? Mhmmm. I wouldn’t doubt it if you haven’t already. Several times. Metaphorically speaking. It is common knowledge that attorneys do this as a matter of course. We all have a boss whether we like it or not.”
See, that’s where you’re wrong (at least with respect to me – I can’t speak for NAL), but I don’t expect you to get it, because you’re not a professional. I have clients, but I don’t have a “boss.” My professional obligations trump conflicting client requests every time. (You can accuse me of simply being sanctimonious, but it is a fact that my professional conduct is meaningfully regulated by a regime that is completely independent of my clients’ desires.) What trumps your boss’s instructions in your world? A bigger boss’s?
Sure, some attorneys cross the line sometimes, and many attorneys push the limits of the line frequently, but I bet it happens a lot less than you think, especially in the relatively genteel world of patent prosecution. My clients are all sensitive to the fact that I’m operating under pretty well-defined ethical and professional constraints, so when I push back on a request they usually give, or we work out a compromise. (Actually, every time, so far.)
From what you’ve told us, it’s pretty clear what would happen if you told your boss, “I’m sorry, but I can’t do as you suggest because it conflicts with the MPEP.” But that’s precisely why it’s silly to talk about “professionalism” in the context of the examining corps. You’re not professionals, you’re employees. I don’t mean that to be condescending (although sounding that way is probably unavoidable); it simply means that appeals to professionalism are a complete waste of time because there are no defined standards of professionalism for use as a reference. That’s also why your incentive schemes (and those of your managers) are so important – those schemes are the only meaningful regulators of your daily behavior.
Come on, surprise me with a thoughtful response, rather than your usual posturing.
6,
Your non-answer in the face of direct law does not surprise me.
Keep on shining that shield of persistent ignorance.
6, you want to know who was laughing? I had one idea that ran by a director who thought it was good enough for me to hold a conference with all the SPEs in my group. Problem was, I needed help to start a pilot from the goodfornothing PTO computer people to write some code for my algorithm using data from PALM. The idea had to do with fair, efficient and “automatic” docketing. All thought it was a good idea, except three old school idiots who are no longer there. None of the others wanted to help because it would have meant working.
One goofball SPE confronted me in the elevator after the meeting. He was pissed that I was taking “work” (read “punishment”) away from his duties. In fact – he was right – I was conspiring to automate their jobs and do away with them altogether. After all, a high school dropout could perform most of their work.
And I did this on my own time.
I eventually got sick of the corruption of production and left. Even after I left, I met with the former fearless leader once to discuss ideas about things he needed to do to avoid catastrophic backlog. Needless to say, he ignored all my brilliant plans and the backlog did him in.
Now I enjoy making fun of them and could care less if the entire system fails.
“6, how then can you follow the Law (not the MPEP guidance) in applying 37 CFR 112 only to claims?”
You’re asking more questions. We’re keeping this simple.
If you want to discuss it further you can come down and talk it out mano e womano because I’m tired of answering the same ol laudable assertions. I get the feeling you’ll hesitate to make yourself look the fool in real life. Especially if we video tape it for youtube for peer review.
“No examiner that’s been at the PTO more than about 5 years or so is going to quit if they institute negative counts for re-opening. They just won’t re-open.”
I believe you just left ~half of the examiner corps out of your scenario.
Other than that I agree with you for the most part. Except the part about QAS’s maybe. It’s the SPE’s responsibility to sign. Either it is good enough for them to stand behind or it isn’t. Who gives a dar n aboud QAS’s? They need to just go about their jobs in the background and nobody even hear about them. And from what I hear, that is precisely how things are being changed.
In addition, blaming the SPE’s for “not doing their job” is a bit simplistic as well. The job they do is merely a product of the system into which they are thrust. If they have examiners under them that can’t find art to invalidate a claim that is on its face invalid to someone of their years and they have 8 of these people let’s say, they can’t just sign their name on an allowance. And they can’t just say “no go back and do it again” ad infinitum to their 8 examiners. They have to keep things moving. So, in that respect, I’ll have to disagree with you on the directors “seeing who does the job correctly”. They’re, more or less, all doing the job “correctly” for the position into which they have been put.
I would go so far as to say that their job description isn’t to ensure that every action is perfect, it is to ensure that things keep moving. Again, this is simply a result of the system into which they have been placed.
Either way, stopping the reopening is small potatoes whether you guys like it or not. The reopening merry go round at time of appeal happens in such a small percentage of cases there’s hardly even a reason to bring it up. If you personally have it happen “a lot” then you might want to examine your practice and find out why, because it isn’t happening to everyone, even if the few whiners are vocal about it.
JD, on the subject of the “corrupt managers” which you bring up, I find myself skeptical. They may make a misrepresentation or two that decieves the naive congress, I can’t say whether yes or no. But the fact remains that I believe you are ignoring what their “job” is. Their “job” is to make sure, first and foremost, that business continues along the status quo in so far as possible. And they do an ok job at that. Not running the PTO into the ground is just as important as making it shiny.
And btw guys, whether or not I’d jump off a bridge at my boss’s behest depends on two things. How far off the ground is the bridge, and how much is he paying me?
By the by NAL, would you jump off a bridge if your client told you to? Mhmmm. I wouldn’t doubt it if you haven’t already. Several times. Metaphorically speaking. It is common knowledge that attorneys do this as a matter of course. We all have a boss whether we like it or not.
And NAL, the question of 15 to 50 cannot be “moot” even if you want to pretend that the other question is moot. It is an initial determination which you mandate in your system, to be determined by “experts” that we pick up from our local academia.
200 pages. 2 easily invalidated claims. 15 hours or 50 hours?
What’s the call?
“jguay”
Oh, look who admits that their ideas are laughed at in the public forum? Obviously they’re laughed at, because the ideas fail to take into account the realities of the situation. It isn’t *just* because people don’t like you, or JD, or anyone else bringing up the idea. And it certainly isn’t that someone in power didn’t think of the idea first. Nonsense. They very likely did think of it. You got laughed at because your idea ignores several fundamental principles that are at play in the system that will likely doom it. Some of which I just related to you above.
That’s not to say that your idea might not work. It very well might. Then again, it very well might lead to nothing but disaster or lost resources. Or it might work a little, and still be a disaster. My humble opinion is the later.
Look on the bright side jq, if NAL ever decides to show up and state her opininons in public then she can come and sit by you in the dunce corner with everyone laughing.
“We can agree on that much. The PTO overestimates the quality of the patents it issues.”
And grossly overstates the quality of the rejections it issues. Outright lies, in fact.
Thanks for the gratuitous comment Malcolm.
Except I was addressing 6, not you. But please, feel free to try give a substantive answer in 6’s stead, if you can.
…Thought not.
MaxDrei condescended: “the best way to get improvements out of a USPTO Examiner is to treat it as if it were a donkey”
Yes, Max, I’m sure the commenter was honestly suggesting that we give Examiners carrots when they do work and whip them when they don’t. Your continental sensitivities amaze me.
JD: “You have these (mis)managers attending bar association meetings (e.g. IPO, AIPLA, etc.) with their PowerPoint presentations boasting of the examining corps’ “affirmance rate” at the Board. Completely phony statistics. Utter garbage.”
We can agree on that much. The PTO overestimates the quality of the patents it issues.
John,
You are right. The corrupt lifer (mis)managers at the PTO are never, ever going to take any suggestions from applicants and the patent bar, i.e. their “customers.”
The reason for that is very simple. The corrupt lifer (mis)managers set up a bunch of phony “goals” that they assure Congress they are going to meet and then cook the books and go to Congress and say, “We met all of our goals. We’re going to give ourselves a bunch of bonuses now. We’ll try not to break our arms patting ourselves on the back. See you next fiscal year.”
It’s disgraceful. You have these (mis)managers attending bar association meetings (e.g. IPO, AIPLA, etc.) with their PowerPoint presentations boasting of the examining corps’ “affirmance rate” at the Board.
Completely phony statistics. Utter garbage. The fact that they can spout these lies out of their mouths with straight faces is the truly remarkable achievement.
John, many times over people bring up excellent ideas like yours above, but the PTO will not implement them, much less consider them, because they did not think of them first (actually, highly likely some smart examiners did propose good ideas like these, but they were laughed at/ignored by the management there). I know this from experience (and I know you do too).
Further 6,
Your lack of an answer on point, as your abundance of ignorance, is fully expected.
BTW, the fix for the re-opening travesty that currently exists at the PTO is very simple. Currently, an SPE can authorize re-opening after an appeal brief is filed. See MPEP 1207.04. Take that authorization away from SPE’s and give it to the TC Directors. And require that the SPE, the examiner, and any donothingknownothinguselessdeadweightGS-15 that was involved in the appeal conference, personally meet with the TC Director to request re-opening and explain why it’s needed. None of this just signing off on whatever is put in front of them nonsense that is the usual procedure over there (like TC Director’s do with new grounds of rejection in Examiner’s Answers. Has any TC Director ever refused to sign off on new grounds in an Examiner’s Answer?). And then hold the TC Director’s accountable for the W-L record at the Board also. I think the TC Director’s will very quickly figure out which SPE’s are doing the job correctly, and which are not. Same with the donothingknownothinguselessdeadweightGS-15’s over there.
Even better, let the applicant’s representative attend this meeting. And give the representative the proposed new grounds (and any prior art) in advance of the meeting.
Solutions so simple they will never be adopted by the utterly corrupt lifer (mis)management of the PTO.
Mr. Kappos, please help us. You’re our only hope.
“If your boss told you to jump off a bridge, would you do it?”
I believe most, including Doll, would. It’s a sick sick place – and it is full of donothingknownthinguselessGS15s that should be examining full time.
A simple Yes/No proposition was put to 6:
“You are charged with examining an application, not just examining the claims.”
Yes or No.
6’s answer was “No”.
6, how then can you follow the Law (not the MPEP guidance) in applying 37 CFR 112 only to claims?
Better yet, how do explain the Law (not the MPEP guidance) at 35 USC 131, which states in pertinent part: “The Director shall cause an examination to be made of the application and the alleged new invention;”?
I see that you still need to work on your reading comprehension 6 – “application” rather than “claims”. BTW, the Law at 35 USC 111(a)(2) specifies what an application contains.
Apparently, my admonition of DO YOUR JOB must be prefaced by KNOW YOUR JOB. You assuredly do not.
6 further offers as a defense: I’m required to do what my boss tells me to do. What you suggest is not what he tells me to do.
6, are you purposely trying to draw the lightening of a certain poster and the rant against donothingGS15’s? If your boss told you to jump off a bridge, would you do it? You need to know your job whether or not your boss tells it to you.
Your hour question is moot in light of the correct answer to my question. An applicant’s claims cannot come from anything other than the application. If you had done your job of examining the application, then for the critical part, ANY number of claims being generated fall into your examination duty – each and every time. ANY claim arising in amendments MUST find their origination in the material you have been charged to examine. You are charged with examining the application. KNOW YOUR JOB and DO YOUR JOB. You suggested that I was talking out my arse (LOL WUT). The evidence of who the arse is, is quite clear.
What JD advocates seems to me like a common sense practical approach, that rewards “professionalism” and dignifies the role of the Board. But what do I know, and what sort of a basis is “common sense” anyway? Others?
“I agree with 6 on negative counts. Do that and so many people will quit (or get fired) that pendency will be an even bigger mess than it is now. I’ve seen similar situations before.”
No examiner that’s been at the PTO more than about 5 years or so is going to quit if they institute negative counts for re-opening. They just won’t re-open.
There’s no need for negative counts for re-opening. What is needed is a serious hit on SPE and QAS ratings for re-opening. SPE’s will sign any final rejection that is put in front of them so long as all of the claims are rejected. That has to stop. The way you make that stop is by letting SPE’s know that if a final rejection they signed is appealed, and they direct the examiner to re-open, their rating is going to take a big hit.
So you’re thinking then SPE’s won’t ever direct, or let, the examiner re-open if they know their rating will suffer.
Just make the SPE’s W-L record at the Board an even bigger part of their rating.
Replying to the One (at 1.02am) who is Blessed with Perfect Vision: I’m with you. I’m all in favour of motivating people. I’m just a tad doubtful about your founding premise, that the best way to get improvements out of a USPTO Examiner is to treat it as if it were a donkey. Lose a lot of donkeys, who cares. We can soon breed a lot more, eh?
So, no, I don’t trust you, actually. But thanks anyway, for taking the trouble to write in and illuminate me with your considered views on the matter. It reveals what one is up against.
“Hire Accenture or somebody with business process expertise.”
ROTFLMAO.
When I read the suggestion from “Some Guy” to:
“Hire Accenture or somebody with business process expertise”
I really did laugh out loud. That because I had just read 6 on the subject of train wrecks:
“Frankly I don’t see any way to fix it though within the current statutory, regulatory and judicial framework. Any attempts to do so are doomed by the self defeating nature of the system which appears to be set up specifically to cause itself to fail. Or at least it morphed into that state over the years while people (mostly the courts) were not heeding the direction they were steering it. Anyone who tells you differently is a dreamer, at best, or is lying to you at worst.”
Can Accenture do something about the statutory and judicial fundamentals? I think not. Me, I think the courts make the PTO job miserable. It makes me all the more thankful for the accident of the current patent system in Europe, in which a granting authority with 36 Member States is not subject to correction by any court (which knows about as much as Accenture about how to examine patent applications competently) sitting in judgement over it.
I have a question, on Examiner retention stats.
I suspect that retention is loads better in stable fields like “medical devices” (where Exrs get some fulfilment and job satisfaction) than in “jumbo” fields like bio, or “crazy” fields like business methods. Are there any stats on that?
Negative counts are a good idea.
The majority of examiners will learn very quickly how to avoid them. Trust me. Those that don’t avoid them will quit (or get fired) and quality will go through the roof.
A donkey is motivated by a whip the same as by a carot.
Negative counts are a bad idea
>> Jimmy Jimbo | Sep 02, 2009 at 03:29 PM
I agree with 6 on negative counts. Do that and so many people will quit (or get fired) that pendency will be an even bigger mess than it is now. I’ve seen similar situations before.
Any count system developed internally will fail. Outside experts who aren’t afraid to say things people won’t like are what is needed. Many industries deal with workflow issues, including patent attorneys who must repond within six months. The PTO is not the only organization that deals with workflow and production. Hire Accenture or somebody with business process expertise. Recommendations should be made, including those which may require statutory changes. If nobody steps back to look at the big picture, nothing will change.
(1) 1/2 count for RCE;
(2) two counts for first OA on merits (even if first OA is poorly prepared, the second OA will/should be well searched and prepared); and
(3) 10% reduction in count requirements.
I’ve seen a lot of comments about examiner’s “forcing” RCE’s by not entering after final amendments, and how examiners are not cooperating with practitioners to get allowable claims. It’s common knowledge that examiners are given a limited time to work on a case, and that the counts are split between first action and disposal. By the time an after final amendment comes in, that allotted time is over. Unless it’s clear that the amendment will put the case in condition for allowance, it’s not going to be entered because the examiner has no more time left to devote to that case. Practitioners don’t like to work for free and neither do examiners. In fact, examiners often feel that practitioners are not cooperating when no serious amendments come in until after final. I also feel that expecting an examiner to pick through your spec and find allowable subject matter or completely rewrite your claims is unreasonable. Of course if a clear path to allowance can be found, the examiner should suggest it. But that’s different from asking “is there anything in the spec that’s allowable?”
“Do they even know how to classify a claim for search anymore”
I sincerly don’t know the answer to this, but I can tell you this much, I do, and it doesn’t matter that much. The classification is a shambles. Frankly, the classification is such a shambles that even if you use it correctly in my art chances are you won’t find the correct prior art in the right spot anyway.
I can tell you about my personal experience in dealing with colleagues and classification though. When I go to a colleague (i.e. junior examiner) for their opinion on where to classification search (this never happens anymore btw) if it is any more advanced than the basics of classification in our art then the answer will be on its face incorrect. Primaries do much better, and my spe is pretty awesome at it. However, with the examiners themselves classifying things all the time and the sigs just going on what the underlings did then the misclassification is gigantic. Truly, gargantuan. I’m not overstating this. Indeed, I couldn’t even if I tried.
“6, you really need to take a look at what many of your colleagues are sending out as FAOMs, and then maintaining for final rejection. ”
No, I don’t. I already know. Frankly I don’t see any way to fix it though within the current statutory, regulatory and judicial framework. Any attempts to do so are doomed by the self defeating nature of the system which appears to be set up specifically to cause itself to fail. Or at least it morphed into that state over the years while people (mostly the courts) were not heeding the direction they were steering it. Anyone who tells you differently is a dreamer, at best, or is lying to you at worst.
In short, quality in actions is low although quality in allowed cases might be passable. Necessarily so. I get this. And I think most of you out there with your thinking caps on do too. And this raises a host of issues.
You simply cannot have rising complexity in the arts and the law along with increasing numbers of submissions and growing beaurocracy forever. At some point the system breaks. It broke. It wasn’t designed to handle this and it grew completely the wrong way within many of the guidelines the courts, congress, and perhaps mgmt shortsightedly provided. Thus, it is broken, and the quality we see right now is a direct reflection of this.
Now, I’m not going to say that redemption is out of the question. It isn’t. Far from it. The various parties involved will take appropriate measures to preserve the status quo to the best of their abilities. And when the system has finally denigrated (this could take decades depending on how well the other actors act) to a complete shambles congress will likely step in. Or, a miracle could happen and the courts could overturn decades, or centuries of precedent and set things near straight. That is unlikely.
But, a glimer of hope shone bright with KSR, and may again in Bilski though unlikely. To be sure, and as a case in point, many on here probably think that I just don’t like Newman, or her many patent protectionist policies. Nothing could be further from the truth. I simply recognize that such policies are grounded in the days of when she started in the field, and will have no place in the future which the other judges are struggling to carefully craft in the face of decades of improper precedent on which she, as well as various other judges at times, still relies upon as gospel.
All that said, a quick fix to the quality of OA’s isn’t going to happen. The quality is merely a symptom of the disease eating at the system as a whole. A quick band aid might be applied by Kappos in the form of any number of small reforms that don’t really take a genius to figure out. All of these will be nothing more than shifting the chairs around on the titanic to make the passengers more comfy on their way down.
In short, quality is a product of the system as a whole. Not examiners, not mgmt, not the courts, not congress. It is a mashup of them all. And, this mashup has gone sour, and is here to stay. There’s nothing for any of us to do about it except try to get into powerful positions. Other than that, we’re at the mercy of the rest of the player’s whims.
If you want to discuss it further we can but I don’t particularly see the need.
Probably charcoal. I don’t think I have access to the gas grill I saw out there one time. But, if we wait and just have you guys show up at a party with my buds in the city they have gas. Actually they have an awesome grill. Must have cost like 3 or 4 grand I’d guess. It’s a community grill for their building though, it isn’t “theirs”. I’m sure they’ll be getting together before the end of the summer or early fall and I can bring whoev.
Yes, they’re still below Peggy et al.
Beir I’ll get back to you later.
“All my muckety mucks graduated to being even bigger muckety mucks JD :(. You’re probably out of luck.”
I’m sure they’re still below the muckety mucks I used to work with in my time over there.
“I’ll make hamburgers.”
Charcoal or gas?
I suppose watching a thread die this way is more entertaining than a Blimply sockpuppet flame-out, but only mildly so.
No.
As an addendum: I’m required to do what my boss tells me to do. What you suggest is not what he tells me to do.
K. Answer mine now. 15 or 50?
Does it change if the application’s claims change significantly?
All my muckety mucks graduated to being even bigger muckety mucks JD :(. You’re probably out of luck.
And NAL I’m totally serious. We’ve discussed practically this same issue over the course of what? 1, 2 years? Come on down here one weekend. JD can come too. I’ll make hamburgers. Who knows, a muckety muck or two might show up. I do know one I could probably still get with regularity, and I certainly know a spe or two. He’ll come and party whenev.
“Additionally, if you’d like, I can try to arrange for you to be present at a discussion with a director or two and we can have a frank discussion with them present.”
Still waiting for my lunch with all of these PTO muckety mucks you’re so tight with.
let’s make it simple 6.
Comment on “You are charged with examining an application, not just examining the claims.”
Yes or No.
You don’t have to rant on about suggestion claims – where did that come from?
My art field, your art field – again – where did that come from?
Keep on throwing in extraneous items, and accuse me of avoiding answering the question – typical 6 briar patch crap.
If you want an answer to 15 or 50 Hr, you will have to structure the question iin an organized and intelligent manner. Not sure you are capable of that. Better add that to the list of things you are askiing your English teacher (unless, of course, the dog ate your homework.)
“Really, the expectation is that simple.”
Alright I’m going to try to be nice.
I see you’re avoiding answering the question. Is 15 hours, or 50 hours the appropriate designation by the “professional” that we acquired from “academia”? Huh? 200 pages, but only 2 claims, broad ones, easy to invalidate. Which is it going to be? A simple 15 or 50 hrs will suffice for an answer?
Does the designation change if the claims change significantly? A simple yes or no will suffice. A “DO YOUR JOB” is a non-answer because my job is to examine, not designate times for examining. Remember, we picked up “professionals” at our local universities to do that job. At least I think that’s your plan right?
“cheat on the initial examination.”
NAL, invalidating 2 broad claims and not examining every single aspect of 400 drawings that go along with that 200 page disclosure is not “cheating”. I’m sorry sweet cakes. It just isn’t. And no manager or lawl will ever make it be so.
Your art must indeed be simplistic. My art involves devices sometimes. Sometimes there are drawings of these devices. Sometimes there are about a million and one ways that one could draw a claim to the device, and at least 10000 of them would be “patentable”. At the same time the claims would be “worthless”. Why would I (or any other examiner) sit and write 10000 worthless suggestion claims?
You know about as much about actual examining as you do managing people NAL. A percentage that approaches 0. And I’m not saying that to make fun of you as per usual. I’ll say it to your face if you want to come down here and be completely serious while doing it. The MPEP’s loose guidelines apply within reason. They’re not strict, and they’re certainly not strictly enforced. And they never will be, for good reason.
Even JD should be able to chime in about his toilet paper holders. Sure, there’s probably a thousand ways to put the claims in condition for allowance. But you didn’t see those thousand claim suggestions in his OA’s now did you? No, and there was no reason for them to be brought up.
I tell you what NAL, in all earnestness, I invite you to come on down one of these weekends here soon and we’ll have a little examining competition. You vs me, on a random app. Or, if you’d prefer, you can come down and I’ll pick an app, and you can show me how the “proper” examination should be done. When you get through writing up all the suggested amendments to put the initial overbroad claims into condition for allowance a month later, you can submit to me that is how it should be done.
“From the looks of your answer, that is indeed what you do.”
That’s what everyone does to an extent. I do it to much less of an extent than many people. There is no examiner that both makes production and does a “full” examination according to your misguided standards. It simply isn’t humanly possible. I’m sorry if you don’t like reality, but that’s how it is.
The ones you think are so professional and wonderful and put on airs about doing the things you <3 are putting you on, or they don't understand the full ramifications of what you're saying. The later is actually the most likely.
The very issues you routinely bring up and implicitly bring up above, are brought up at meetings occasionally you know. How long should I search? You'll hear some newbie ask. Year after year a new batch will come to a meeting and ask this question. I probably asked it at some point. How in depth into the application should I go? How many suggestions should I make and when should I make them? Should I include in my search, and review of the art, subject matter not contained within the claims? Etc. This happens every year. Every single year. Invariably everyone simply looks away and acts like the question is stupd on its face. The spe, or director, says "do what is reasonable within the time alloted". And that is what we do. There is nothing else to do.
If you sincerly think differently then come and discuss this with me in person. This weekend or next. I'll even be nice and put on my professional face and clothes.
Additionally, if you'd like, I can try to arrange for you to be present at a discussion with a director or two and we can have a frank discussion with them present. Perhaps they can chime in on a few issues which you aren't fully understanding but which your colleagues do have a very firm grasp upon.
MD: “Factor in that American patent attorneys are attorneys at law first, and patent practitioners second. And they are English common law attorneys who imbibe with their mother’s milk the lawyer’s imperative, that what is not denied is admitted. So, they deny everything.”
Thankfully, not everyone does this. The ones that do are so hard to work with because you can’t even have an honest conversation about technology or anything else for that matter. They are so wrapped up in minutia (often of language) that they can not see the forest for the trees.
Bierbelly – the Examiner is just going with what the Google wordsearch revealed . . . The have the InTeRnEt, so they don’t need any class(ificiation).
“We already have that, it is called “final office action” and we don’t need any more encouragement. What do you not understand about this? RCE’s are appliant’s way of getting out of the examiner having prepared the case for appeal aka sending you a final action. Nothing more.”
——————–
6, you really need to take a look at what many of your colleagues are sending out as FAOMs, and then maintaining for final rejection. As a former examiner, even I’m embarrassed for them. Do they even know how to classify a claim for search anymore? I’ve got an application directed to a surgical suture anchor in which the Examiner used, as a primary reference mind you, a rope connector for marine uses…and not even close in design.
“Can’t join you, jquay, in debating the esoteric aspect of ‘restriction practice’. Outside my experience. Don’t understand it.”
Neither do the examiners, so you’re in good company.
To 6’s ever so snarky replies, let’s answer the question of “Can we pick these experts up at walmart or do they have to be home grown?” first, because it has at least some small modicum of reason.
My comment included the words “from each art or classification”. Despite the likes of 6, I know that there are indeed talented, respected and professional examiners that work in the Office. It should be no surprise who among these professionals would be ideal candidates for promoting and holding in higher esteem as the recognized experts in the art. I would not limit this group to current Office personal either, but would open the opportunity to industry and academia. This well-respected pool would be ideal for a first screen of applications. 6, for you and your skill level, walmart may only be a future aspiration. I do not want to take those dreams away from you.
As to “LOL WUT? I know you’re an attorney who practices, stop talking out ur arse.”,
and
“Cases can come in with 180 page specs, and 2 claims. What’s the call?”
The call is DO YOUR JOB.
“And, right in the middle of prosecution, the claims can be amended to have 2000 claims. What’s the call?”
Again, the call is DO YOUR JOB.
Really, the expectation is that simple.
The point you wish to press in the false easiness of difference in hours is only available if you cheat on the initial examination. From the looks of your answer, that is indeed what you do. You are charged with examining an application, not just examining the claims. This also explains why I receive FAOM’s that would be a shame to third graders, with stitched together key words in disparate references.
As for new claims and new matter, clearly, the only place claims can come from after an application is submitted is from the body of work presented at initial filing. The same body of the work that should be read prior to searching per the MPEP guidelines previously noted. The same body of work that creates the added subject matter boundaries. I know you like to argue, but please pick a topic that you can at least represent some semblance of intelligence in.
Apologies for the arse WUT comment are not expected – even other posting examiners are clearly embarrassed by your (lack of) intellect. At least you didn’t use the N word.
The trainwreck continues.
“This would encourage the examiner to cooperate with the practioner in putting the claims into condition for allowance or appeal as soon as possible,”
We already have that, it is called “final office action” and we don’t need any more encouragement. What do you not understand about this? RCE’s are appliant’s way of getting out of the examiner having prepared the case for appeal aka sending you a final action. Nothing more.
Plead that case to POPA Bierbelly! (I know you know)
“—applicant’s filing of an RCE should not count as a disposal.”
——————————
The more I think about this, the more I like it. No count for an RCE…no additional count on the case until it’s allowed, appealed or abandoned.
This would encourage the examiner to cooperate with the practioner in putting the claims into condition for allowance or appeal as soon as possible, and not gaming the system by unnecessarily forcing RCEs.
Not to be too glib Max, but Patricia’s post does not add much at all to a working solution. One quick answer to the question of what incentive is there for an examiner to actually do the job they are supposed to do (and are paid to do) is something called professionalism.
——————-
To be fair, PTO administration/management has seldom treated examiners as professionals. They’re treated like blue collar workers. Surely there are some who don’t act as professionals, but is this because they naturally have poor self image, or because the whole count system encourages abuse, and the management attitude toward them is self defeating?
My last comment about the fees paid for large applications did not make it through the filter. Sorry, I am not going to type it over. I have too much work to do.
Can’t join you, jquay, in debating the esoteric aspect of “restriction practice”. Outside my experience. Don’t understand it. All I know is that one can’t equate it with “non-unity” at the EPO.
But your comment squares with the howls of complaint from prosecutors about Examiner “abuse” of the requirement for “restriction”.
You may be right about bio, but I have an EE background and do practice in almost every other discipline. I also worked as an examiner for many years and know that system very well. I found that a **proper** restriction can be the examiner’s most powerful tool. Divide and conquer. Rejoin when fair!
Not yet convinced jguay. In my firm I see EE, Chem, Bio and Mech cases. There are of course some jumbo mech cases and some slimline chem cases, but the average number of attorney hours consumed on a typical Mech case is way below what it takes on an average telecoms or bio case.
Of course, the amount of churning, per app, is measurable, as you say. Where there’s a will, there’s a way. I think the Japanese corporations have been at it for donkeys’ years, assiduously comparing the performance of one firm of European patent attorneys with that of another.
Max, professionalism can be measured to some extent by tracking the number of substantial actions per disposal. Large applications like you mentioned are rare overall, but can be dealt with in a logical fair manner. When I used to see “200” claims, concluded there must be a restriction. Problem is, which is easily solved, the PTO bosses (SPEs!) do not allow more than one hour for a restriction. Furthermore, restriction practice is not understood by most examiners. All solvable problems!
Three naive questions here, prompted by Ms Costanza. Given that some apps have 500 dense pages and 200 claims, while others have 10 pages and 20 claims on, say, a kitchen tool, must a high tech Examiner achieve the same number of disposal points per year as a kitchen tool Examiner, or is the benchmark number of points different, depending which Art Unit the Examiner is in? Apart from “professionalism” which I find a bit nebulous, is there any “harder” self-interest point that would motivate a PTO Examiner to do a thorough search and a well thought out first office action? And back to the Polk Wagner point (defer clarity as long as possible). It lies in the business interest of Applicant to obfuscate, from the get go. Is that compatible with the Costanzo self-interest in getting a perfectly focussed, bang on the button PTO search report?
6, you are an imbecile. A shame to the Office. I am sick of you.
“It all seems so Patently O(bvious) now – MM is indeed an Examiner.”
Exactly. Go back and read some of his posts. Every post in which he discusses examiner interviews he is critical of applicants and practitioners.
Loved his post above. Filing a paper within one month of an improper final rejection is no big deal huh? Let’s have a show of hands from some real practitioners as to how many have had that strategy work out for them.
“I envision a select group from each art or classification THAT KNOWS THE ART would be the ones performing the initial evaluation and setting the complexity – NOT some clueless bureaucrat.”
Can we pick these experts up at walmart or do they have to be home grown?
“Any claim that changes so much as to change the scope of complexity of the application as a whole by definition has added subject matter”
LOL WUT? I know you’re an attorney who practices, stop talking out ur arse.
Cases can come in with 180 page specs, and 2 claims. What’s the call? 15 hrs, or 50 hours? And, right in the middle of prosecution, the claims can be amended to have 2000 claims. What’s the call? 15 hrs, or 50 hrs? If 15 the first time, does it stay 15 for the next OA or RCE? The point is valid NAL. And if you want your suggestion to be taken srsly you’ll need to address it, not dismiss it as not even mattering. Otherwise your system is just as broken as the current one. More so in some cases.
It all seems so Patently O(bvious) now – MM is indeed an Examiner. Explains why he has so much time to post on the board (good job, MM – you must really be doing a thorough search and preparing a thorough Office Action when you spend 7 hours a day posting on the board).
To think some of the other posters may have taken advice from someone who has never prosecuted an application, never written an application, never amended a claim . . .
Curious is also correct. Back until the mid-2000s, Examiners knew how to figure out what the invention was (not just what the claimed invention was). As a result, proposing something during an interview actually resulted in agreement that the amended claims would be allowable. Examiner 6 and MM can now only think “well, I only word searched the as-filed claim, so I can offer no opinion on anything during the interview.” Sad.
—applicant’s filing of an RCE should not count as a disposal.
— double the number of counts for first OA’s on the merits
———————-
I like these suggestions. IMO, examiners are often abusing their discretion in failing to enter AF amendments, in quest of the Blue Light Special, i.e. disposal of the pending case and an easy first count in the RCE. Prosecution would be more compact if we could get at least some AF amendments entered and proceed to appeal at that point.
The bigger problem is examiners stretching the meaning and legal effect of the prior art disclosure (at least in my practice). Misconstruing the meanings and teachings of the prior art in order to allegedly meet the claim limitations. Issuing “anticipation” rejections which are, at best, obviousness rejections. Failing to adequately respond to all traversals.
These problems will be overcome only by having the supervisory examiner actually READ and UNDERSTAND the office actions they’re signing for junior examiners.
There’s also a lot of petty crap going on. Today I picked up an OA in which the Examiner indicated he refused to consider a US reference, since the IDS had the assignee listed rather than the first named inventor. Proper? Perhaps. Ridiculous? Absolutely.
Not to be too glib Max, but Patricia’s post does not add much at all to a working solution. One quick answer to the question of what incentive is there for an examiner to actually do the job they are supposed to do (and are paid to do) is something called professionalism.
More to her point, effort IS paid for. Further, I know of no practicioner that encourages office actions NOT to be based on serious consideration, in fact, if Patricia and yourself pay attention, you will see that most practicioners’ biggest complaint is that office actions lack serious consideration. The issue under discussion is HOW to recognize that profesionalism. The current way (point system) clearly does not work here in the states.
Max, go back and read my posts. For god’s sake.
Curious,
I find it interesting that your post at Sep 02, 6:26 PM simply suggests changing the count values. While very easy to implement, this is just as easy to abuse. I have seen way too many FOAM that do not even come close to recognizing what is in the application and believe that the FOAM was completed only by a key word search of terms plucked from the claims without any reading of the rest of the specification, completely ignoring the guidance at MPEP 704.01 Search,
Very first sentence: “After reading the specification and claims, the examiner searches the prior art.” Yeah, examiners are actually supposed to read the specification, and although this sounds like a no-brainer, I have seen several posts on the blogs from examiners who claim that they simply cannot do that.
You do seem to recognize the abuse of the system at the RCE level, but your suggestion only shifts that abuse and largely leaves the decrepit system in place. Of course, posters such as don’t bother, BRS and jguay are correct – the problem is a massive system wide failure. Tweaking counts simply won’t do.
You also seem to take reservation with my starting suggestion at Sep 02, 3:07 PM. I think that you are not quite getting out of the current paradigm. Try re-reading my post without shoehorning it into your view of tweaking the system. I am calling for a radical overhaul. I will grant you that my stating point was not fully fleshed out. Thus, I would add that the initial review process would need to be staffed appropriately (and if the classification process step is f’ed up, then that step would need to be overhauled as well). I envision a select group from each art or classification THAT KNOWS THE ART would be the ones performing the initial evaluation and setting the complexity – NOT some clueless bureaucrat.
As to your comment about claims changing – who cares? Any claim that changes so much as to change the scope of complexity of the application as a whole by definition has added subject matter. Perhaps you are viewing the complexity rating much like some examiners who only search on claim key terms without actually reading the entire application. In such case, you are merely repeating their mistake.
Plurality mentioned that applications currently are somewhat rated by complexity based on art unit or classification. This lumped complexity is NOT what I suggested. I am talking about giving each and every application its own due process and not lumping applications into any mass generic (even generic at a classification level) complexity level. As hinted at by the Supremes, EACH application must be judged on the merits of its own accord.
Why couldn’t somebody way upthread have written something as manifestly sane and sensible as that little comment from Ms Costanzo? Where’s the snag, posters?
Effort should be paid for and extra effort should be rewarded. It is in a patent practitioners self-interest (and the Client’s) to encourage office actions based on serious consideration of the specification and related search results. Office Actions should be given the respect (in terms of time, effort, and compensation) that they deserve. What incentive is there for an Examiner to conduct a thorough search and draft a well-thought out Action if his or her work and time is not recognized?
“In the rare instance when I’ve received an improper final, I’ve simply gotten on the phone and informed the Examiner of the error. The Examiner then tells me to file a paper noting the error and requesting withdrawal of finality. This should be done within one month of receipt of the OA. Not that big of a deal.”
You’re not fooling anybody, Examiner Mooney
“Back in the day (up till around 2000) telephone interviews were frequent, cooperative, and often productive”
I agree, but maybe around 2004. In the past five years, in about a quarter of the interviews where I reached agreement that one or more claims with small amendments were allowable over the cited art, the examiner reneged on the agreement in the next action. From the early 1980’s until 2004 that never happened to me.
jayguay-
You’re right about the POPA 110% thing. My bad.
“Crappy examinations encourage RCEs. For e.g., recently a U.S. Examiner sent me a Final and stated that there was new material (NOT: he just didn’t read my remarks where I mentioned exactly where the new little box in the Fig was mentioned in the original text), and that the claims had not been amended (the claims were completely overhauled).”
In the rare instance when I’ve received an improper final, I’ve simply gotten on the phone and informed the Examiner of the error. The Examiner then tells me to file a paper noting the error and requesting withdrawal of finality. This should be done within one month of receipt of the OA. Not that big of a deal.