- The new website Found Persuasive looks to be an excellent addition to the online patent discussion. The authors promise a practical discussion of “patent prosecution strategies and templates for the patent practitioner. Patent attorneys Michael Leonard, Jared Olson, and Sheetal Patel are the authors.
- The ReexamCenter is full of practical information about Reexamination Issues. The new site is run by Robert Sterne’s team at Sterne Kessler.
- Professor Ho at Loyola (Chicago) sent in information about an upcoming event: IP Day in Chicago on November 3.
- The PTO Central Reexamination Unit (CRU) has a new website design and updated statistics.
- USPTO Ombudsman: The PTO has invited public comment on its Ombudsman Pilot Program. The program is intended to create a direct-line of communication for applicants who believe that their applications are being improperly examined. e9-25798.pdf.
“Ooh, listen to big Maverick examiner. ”
Hardly a maverick, everyone in this office took an oath to uphold the constitution, the law etc. I don’t recall taking an oath to do as he says.
“There’s a big difference between presenting a persuasive argument and presenting an argument that that is legally and technically correct, but unpersuasive. The worst attorneys in the world, in patent and elsewhere, are those who try to fit the matters they deal with into neat little categories that lead them to regurgitating well-practiced formulaic responses.”
Yeah I know there is a difference. As to what the worst attorneys in the world do, well, JD seems to be rather successful, even if he is one of the worst, and he tries to fit the matters he deals with into neat little categories. Or at least so he claims.
“The worst attorneys are those who try to fit the matters they deal with into neat little categories that lead them to regurgitating well-practiced formulaic responses”
Hierarchy, I must admit, your argument above was “Found Persuasive” by me.
6: “But let’s be honest also as to how hard working at a firm is. Like you say, most arguable issues likely fall into one of the predefined categories and are not all that complex. Presenting a persuasive argument against many of my colleagues cases wouldn’t be hard in the least bit. I could even take a few minutes to cite some caselaw at the end for flavor.”
Hah, I bet you’re one of those folks who actually does know idea how arrogant and self-important they come across, but just don’t care.
There’s a big difference between presenting a persuasive argument and presenting an argument that that is legally and technically correct, but unpersuasive. The worst attorneys in the world, in patent and elsewhere, are those who try to fit the matters they deal with into neat little categories that lead them to regurgitating well-practiced formulaic responses. Don’t give up your day job, bud.
6: “I don’t remember because what K man says is irrelevant to what the law is.”
Ooh, listen to big Maverick examiner. You probably think the MPEP is irrelevant too. If Mr. Kappos issues a memo to Examiners on guidance for examining under 103 or 101, that’s probably irrelevant to you too. And actually, what the Commisioner says actually is relevant to what the law _is_ in some scenarios, but then you’re an attorney, so you already know that – right?
I’ve got to be on my way for the evening I’ll tty u guys later.
“Except for the fact that my post at 4:18 DID use skillset, and it was only my follow up post at 6:45 that used characteristics. So your Jealousy post at 5:15, between the two, could not have been in reference to characteristics.”
That’s kind of my point. My post at 515 was in reference to skillset. Not characteristics. So why were you bringing it up?
Your ability to comprehend written language has just sunk to a new low I’m afraid.
“What did Kappos recently say about Alappat?”
I don’t remember. I don’t remember because what K man says is irrelevant to what the law is. Thus I have no more reason to remember what he says than to remember what you say. That is, not much of one.
Except for the fact that my post at 4:18 DID use skillset, and it was only my follow up post at 6:45 that used characteristics. So your Jealousy post at 5:15, between the two, could not have been in reference to characteristics.
Tell me 6, do you think your logic skills are on par with your reading comprehension?
Let’s take a little reading comprehension test, shall we – What did Kappos recently say about Alappat? You know where to find it, you were literrally gushing that the work was the sweetest poetry in the world.
Tell us 6, please – A L A P P A T.
If you fail that one, I have a long list to choose from.
“What exactly about the list of YOUR characteristics would I be jealous of?”
I did not remark on my “characteristics”. I remarked on my “skillset”. Which includes, inter alia, the ability to read well enough to have noticed that the two things are different and that I did not remark on the former.
I guess the number one skill amongst the set I possess, and which you are jealous of, is the skill of reading with a high level of comprehension.
6,
Only you and your uncanny ability to be wrong so much and so often would mistake my feelings about you and your famoosity as jealousy.
What exactly about the list of YOUR characteristics would I be jealous of?
6,
I hope that you are right that we couldn’t “find any three examiners with my skillset in the entire office”. Unfortunately, I doubt that is true. That is why the office is in so bad shape & the examiners hired in the last 5 years, by & large, do just poor quality work. They have the same “skillset” and work ethic that you do.
MVS
Jealousy does not become you Noise.
Big Guy I doubt if you could find any three examiners with my skillset in the entire office.
hip young examiners with 6’s particular skill set
what exactly is 6’s particular skill set?
– Hiding beneath his shield of persistent ignorance,
– Bringing rope – lots of it,
– Dropping the N-word, then reveling in it,
– running from challenges
Not a skill set I would look for in anyone I hire.
“Tell me though JD, be honest, was it “harder” “working” at the PTO or working at a firm?”
I’m really looking forward to JD’s answer. And while you’re at it, JD, I’d appreciate your insights into how eager law firms in your area are to hire hip young examiners with 6’s particular skill set. My firm interviewed a few junior examiners a couple of years ago; we were not particularly impressed. Their inability to convey any sense of having an actual work ethic was a big part of the problem. None actually said “As if” or “whatever” or “LOL” during the interviews, but they might as well have. I’m not suggesting that our sample was large enough to be representative, of course, but it soured us on 3rd-year examiners.
“If you don’t think you can handle “working” at the PTO as a GS-12 and go to school part time, then it’s a sure bet you would have zero chance of working at a firm and going to school part time.”
But if I could probably do part time at the firm. Although if I was a 12 I could do part time at the PTO too.
Although, tbh, I probably agree with you, I probably couldn’t handle it and do decently in either. A friend of mine is having a horrible go at it right as we speak, even though he’s doing ok at each, he really hates every minute of it. And if you end up quitting then let’s be honest, you couldn’t handle it.
As to the 12 position, let’s be honest JD, I can start wheelin’ and dealin’ anytime at the office and production and workflow kind of disappear.
But let’s be honest also as to how hard working at a firm is. Like you say, most arguable issues likely fall into one of the predefined categories and are not all that complex. Presenting a persuasive argument against many of my colleagues cases wouldn’t be hard in the least bit. I could even take a few minutes to cite some caselaw at the end for flavor.
Tell me though JD, be honest, was it “harder” “working” at the PTO or working at a firm? And if the later is harder, what makes it harder? Be as specific as you can if you don’t mind.
“Maybe I should stop driving my custom outfitted ’76 Lincoln Town car”
That sounds like a horrible idea!
“Al Gore just called — he said that the internet is broken due to global warming”
It’s not that far fetched, if Al Gore concedes that there is a giant sweltering ball of nuclear hot gas in the sky, of which we do not have Godlike understanding. If the sun decides to give off some nasty EM waves, a broken internet might in fact be due to the sun and global warming.
“I still can’t decide if I want to keep this job during school though and I sure as f don’t want to be a 12 in lawlschool.”
If you don’t think you can handle “working” at the PTO as a GS-12 and go to school part time, then it’s a sure bet you would have zero chance of working at a firm and going to school part time.
I recommend full time for you. Even that may be enough to educate you. But it’s really your only hope.
“It is called having pride in your work and doing things right. Apparently you do not understand this concept.”
Until further notice all of my postings on PO ARE NOT MY WORK.
“Just don’t B$ me. That’s what you are. A B$ artist. ”
If you ask for my opinion then you will get, none other than, drum roll please, my opinion!
If you ask what the right answer is, with no B S, then you’re in the wrong field buddy. Our whole field is founded squarely upon nothing but B S. The laws and rules themselves are B S. Even if you follow them to the T, you’re still doing it the B S way because it is all B S. You’ve been here longer than I have, I’m surprised this hasn’t sunk in yet.
“As for leaving the SPE position, yeah, I tried to do it all correctly. Wasn’t possible to do in a reasonable amount of time & to my satisfaction. Thing is my examiners & directors liked me & keep asking me to come back.”
Yep, I know exactly the kind of guy you are. It’s too bad you can’t learn what is really important in the job, adjust youself accordingly and accept the position and not kill yourself by doing it. And I mean that earnestly. You need to chillax.
Same with me really, I should chillax and take a few promos. I still can’t decide if I want to keep this job during school though and I sure as f don’t want to be a 12 in lawlschool.
Chris,
Do me a favor and …
“screw your courage to the sticking place”
Like I said, I applaud your courage.
(image courtesy of public domain images on Bing.com)
Maybe I should stop driving my custom outfitted ’76 Lincoln Town car — it gets a solid 4mpg city and 8mpg hwy — but boy does it kick ass when you push the pedal to the metal.
Al Gore just called — he said that the internet is broken due to global warming, What a F#$%*^& &@#&t!
Jules,
It hasn’t yet.
JAOI, stop touching it or it might fall off.
Hi JAOI’s little helper,
I’ve a call into Al Gore to see if he can fix it.
Don’t know how you did it JAOI, but congratulations, you have broken the internet!
Giveitawaynow,
You really don’t have much courage – now do you? And why? It seems such a simple request. Just your name. I mean, what self-respecting attorney can’t even go by their own name?
Thanks for the 1.99 verif, MVS.
Was hoping for another option given the two-month time expiration.
By the way, I like guys like MVS.
Its about getting it right. That’s all.
“…Hey Hoot, why do you do it man? What, you some kinda war junkie? You know what I’ll say? I won’t say a goddamn word. Why? They won’t understand. They won’t understand why we do it. They won’t understand that it’s about the men next to you, and that’s it. That’s all it is.”
And about getting it right…
Some people have the “courage” to jump off of bridges too. I applaud your courage.
6,
It is called having pride in your work and doing things right. Apparently you do not understand this concept.
And you are wrong about the stick. My bottom line is getting it RIGHT. That’s it. Personally, I do not care if a person knows an answer or has to look it up or whatever. Just don’t B$ me. That’s what you are. A B$ artist. Make it sound like you know what you are talking about & if no one calls you on it you look golden. When someone calls you out, you can not defend your (wrong) opinions and just throw out more crap to bury the real issue. That you were wrong.
As for leaving the SPE position, yeah, I tried to do it all correctly. Wasn’t possible to do in a reasonable amount of time & to my satisfaction. Thing is my examiners & directors liked me & keep asking me to come back.
So, try getting it right for a change instead of just spouting off over everyone. It’ll make everyone happier. And you may actually learn a little something & be better off for it.
MVS
“You answered the question, above, as if you knew what you were talking about, which you clearly didn’t,”
He asked, specifically, for what I WOULD DO and WHAT OTHER EXAMINERS WOULD DO (PRESUMPTIVELY IN MY OPINION). Ya nimrod.
I will repeat for you since you are apparently reading impared. WHAT I WOULD DO IS THAT I WOULD LOOK AT THE REFERENCE AND CITE IT IF I FELT LIKE IT. SIMILARLY, WHAT OTHER EXAMINERS WOULD PROBABLY DO DEPENDS ON THEM.
Ҥ 1.99 Third-party submission in published application.
(a) A submission by a member of the public of patents or publications relevant to a
pending published application may be entered in the application file if the
submission complies with the requirements of this section and the application is
still pending when the submission and application file are brought before the
examiner.”
HAS NOTHING TO DO WITH WHETHER OR NOT I LOOK AT A REFERENCE. THAT IS, WHETHER OR NOT I ADMIT HIS “SUBMISSION” HAS NOTHING TO DO WITH WHAT REFERENCE NUMBERS I PUT IN EAST AND THEN HIT “SEARCH” FOR INSOFAR AS THEY ARE SEPARATE ISSUES.
Dear je sus you are st upid.
“That is all too typical of how you respond to most things here. Answer 1st & don’t worry if the answer is correct. ”
I’m not sure why you posted this because I clearly couldn’t give two shts and have stated as much for the last several years.
Maybe the reason you didn’t like your spe was because he had his priorities straight and you had a stick stuck directly up your backside.
Maybe that’s also why you didn’t take to the spe position yourself very much when you had it. I know your type. People with a stick up their arse will dmn near kill themselves in the spe position. All for what? Nothing.
“lologringo”,
I am not a SPE. I just happen to know what the rules are better than 6 does (not necessarily saying much there, I guess) and bother to try to find the right answer BEFORE I answer someones questions. Some people DO try to get things right instead of just providing the answer they feel like giving.
MVS
6,
You proved the point and why everyone finds you so arrogant & distasteful.
You answered the question, above, as if you knew what you were talking about, which you clearly didn’t, and then you say “No, actually I didn’t. And I don’t care to look it up.”
That is all too typical of how you respond to most things here. Answer 1st & don’t worry if the answer is correct. Had a SPE like that. Worst SPE I had. Thankfully I didn’t have to report to him. Hopefully your work is better, though I have my doubts.
MVS
Giveitawaynow,
Yeah – I have a few small clients. And, more relevant to you, the courage to go by my name – how about you, “big” guy?
The only last thing I can tell you is that 1.99 seems to allow you to make the submission after 2 mo as long as “it could not have been filed before”.
“both depts concurred that I had a legal duty under 37 CFR 1.56 to notify both my examiner and the examiner of the later-filed app of my discovery.”
I’m not going to tell you otherwise, but that just seems strange. Why would you have to send in a submission to someone else’s case?
Yes 1.99 should allow for 3rd party admissions in some circumstances.
“You DO know that there are proper procedures for a person to file prior art into an application & have it made of record to be considered by the examiner? Don’t you?? I leave it to you, the student, to find the proper cite in the MPEP.”
No, actually I didn’t. And I don’t care to look it up.
Can’t we all just get along?
“I was referencing rule 1.99 which spells out the proper way for a 3rd party to submit prior art. I doubt 6 actually knew anything about it.”
Maybe cause he was too busy actually examining applications?? Unlike a SPE with shtloads of time on his hands and nothing better to do.
In very briefly glancing at the site, I did not see any content that would justify the concerns expressed by some herein. Most of the content I saw represented MPEP quotations and form language for applying the same to a rejection.
This has no italic, and it still doesn’t turn off!
I tried —
I tried, but it wouldn’t turn off.
To Jaoi,
You have to turn italics OFF when you’re finished.
The law does not per se require that action.
Thanks, JAOI’s little helper, I needed that.
That guy is waaaay better looking than Mooney
Mooney is having a bad day:
“Next Time”.
I was referencing rule 1.99 which spells out the proper way for a 3rd party to submit prior art. I doubt 6 actually knew anything about it.
MVS
Its amazing the keen observations you’ve made and the wisdom you’ve amassed from sitting alone in your mom’s basement Mooney…
“Must be Mayo’s brief…”
Nope, just you Mooney
Since Mooney doesn’t know what its like to have and keep clients he thinks anyone who has one must have “stolen” it.
He has the same attitude about dating…as he sits alone every night.
“Malcolm: if they have a large book of business, they never receive their “commeuppance.”
Sometimes it’s hard to tell. Such people are typically habitually unhappy and are always looking for an opportunity to make more money. But the people they’ve insulted or disgusted along the way have usually dispersed everywhere, occasionally in positions where they have the opportunity to opine on the prospect of hiring the notorious attorney. Even if the hiring goes forward, it is often achieved with some form of “wing clipping”, supervision or pre-emptive branding which can greatly diminish the psycho’s job satisfaction.
This is why the most antisocial partners in any firm are typically the ones who just got there or who have been there the longest.
Malcolm: if they have a large book of business, they never receive their “commeuppance.”
“paranoid, vindictive monsters”
The paranoid part, at least, is correct.
They’re coming to take you away, Cave.
I’ve got a Twinkie with your name on it Mooney…
In the mean time, you can strap on your Birkenstocks and go hold hands with everyone.
“paranoid, vindictive monsters”
Puhlease…
Sadly, there are quite a few characters like “giveitawaynow” and “not persuaded” in the ranks of patent prosecutors: paranoid, vindictive monsters who abuse their secretaries, assistants and co-workers when they aren’t hustling others with lies or trying to steal some other attorneys work.
Anyone who’s worked at at sizeable firm for any length of time has encountered these cretins. They have a good reason to be paranoid, of course, which is that everyone justifiably hates them. Inevitably they receive their commeuppance because, at the end of day, there are more decent human beings out there (even among lawyers) than greed-worshipping neanderthals.
How many desirable clients do you personally have Mr. Mitchell?
(….chirp……chirp)
That’s what I though…
JAOI
HTML tags – see below the Post a Comment box and refer to
link to htmlcodetutorial.com
Dear Mr. Moose,
“On the other hand you could have patent prosecution going on before a Sovereign King who could cut your head off if you weren’t persuasive and annoyed him.
Be honest, which do you prefer?”
How did you post italic??
6 states above: “That said, it is entirely inappropriate for you to take that course of action. The appropriate thing to do is to send a copy of the reference to the attorney in the case (or applicant if pro se).”
Not according to both the Office of Patent Legal Administration and the Invention Assistance Center.
When I explained to both OPLA and IAC that another, subsequent patent app had been filed which falls within the scope of my pending app, both depts concurred that I had a legal duty under 37 CFR 1.56 to notify both my examiner and the examiner of the later-filed app of my discovery.
Because I made the discover after the two months time period after publication allowed under 37 CFR 1.99 to post the prior art directly to the file, OPLA instructed me; in addition to this notification of both examiners; to make a written record of my finding in my own file so it would be in the office’s written record(s).
Mr. MVS; since no ones (yet) taken up your challenge: “You DO know that there are proper procedures for a person to file prior art into an application & have it made of record to be considered by the examiner? Don’t you?? I leave it to you, the student, to find the proper cite in the MPEP. ; and I can’t seem to find it, could you share what other (besides under 1.99) way of making prior art of record in an app exists?
Would be a big help.
Thank you.
Relatedly; even with the addition of all the later-app claims (verbatim) to my app months before the FOAM (including examiner notification that I had done so); my app wasn’t even included in the other prior art references of the examiner’s added IDS; and was not used in either the 102 or the 103 rejections.
Anyone have any thoughts why?
On the other hand you could have patent prosecution going on before a Sovereign King who could cut your head off if you weren’t persuasive and annoyed him.
Be honest, which do you prefer?
In your alternative universe, you yourself are unemployed as superfluous and posess only your presently demonstrated skill set…
I’ll have to get back to you.
MVS —
Yes, 6 certainly does know the appropriate procedures for third-party referencing of prior art. I was asking him about situations that clearly fell OUTSIDE those procedures (i.e., outside the 3-month window). Hence his comment to me that operating outside those procedures was inappropriate.
Thanks for the answer, 6. It was what I suspected.
I like Found Persuasive. Great idea. Although, I read through some of the templates… and I generally find citing law to an examiner to be about as useful as talking to cheese. They ignore the law. They call it LAWL if they’re 6. Their SPE doesn’t care. You need to go to the board to get them to follow the law.
Giveitawaynow – No, writing a patent prosecution book does not make the author rich. And no, showcasing skills through a few templates does not change the available bandwidth of corporate clients (i.e., desirable clients).
On a related note, I put my name out here – why don’t folks with contributions like “what’s up bitches” and “Giveitawaynow”? Kind of cowardly – don’t you think?
There is no disagreement that Mooney is a boob.
“much like writing a book on patent prosecution.”
People sell books…
“Good client development”
Why does the client need your services if you’re giving them a template.
Freakin idiots…
I’m glad that Patently-O gave a nod to a new patent blog. Must the “elite” privilege of blogging your professional (and given the level of effort to maintain a blog) personal interest in patent law belong only to those with substantial experience or Ivy League law degrees?
To be frank, while experience overall may matter in avoiding litigation estoppel issues, I think that those attorneys who bill almost entirely on prosecution matters are the ones most finely tuned to what rings persuasively; what will be “found persuasive” to the enigmatic examining core.
Also, I do not find that suggesting prosecution strategies in a blog somehow “gives away secrets for free,” or something like this. Not to be cliche but patent prosecution is an art.. And, as every artist knows.. there is technique, but in application, the expression is different for everyone.
Good luck guys with the blog!!
Malcolm, why don’t you transfer over to that Ombudsman position? I believe you would be helpful to the individuals Alan mentioned.
“The PTO has invited public comment on its Ombudsman Pilot Program. The program is intended to create a direct-line of communication for applicants who believe that their applications are being improperly examined”
I like this program. “Have you spoken to the Ombudsman about your disappointment?” I can hear it now.
“A comments section would be great; that way I’d get a feeling if other experience patent attorneys agree or disagree.”
There is no disagreement among experienced patent attorneys. If two experienced patent attorneys disagree with each other, then you can rest assured that one of the experienced patent attorneys is actually an Examiner pretending to be an experienced patent attorney.
“A comments section would be great; that way I’d get a feeling if other experience patent attorneys agree or disagree. I definitely don’t want to learn the wrong thing.”
If you need to turn to a couple of green, fresh-out-of-law-school graduates from the prestigious Franklin Pierce and John Marshall law schools for advice on patent prosecution, then you probably shouldn’t be in the biz to begin with.
Not persuaded – seems like a good way to establish credibility – much like writing a book on patent prosecution. Whether or not you personally like the content, I think many would say it is good client development – jmho.
6,
You DO know that there are proper procedures for a person to file prior art into an application & have it made of record to be considered by the examiner? Don’t you?? I leave it to you, the student, to find the proper cite in the MPEP.
MVS
With public PAIR you at least need an application number and know what you’re looking for. Disseminating strategies as a fungible commodity is essentially giving it away. Besides, every case is different and you can’t look at rejections and responses as pro forma. I think posting this kind of stuff is unwise for many other reasons aside from that (imagine a pro se inventor relying on material from the site, getting a bad result, and suing).
Maybe I’m wrong, but I would guess that if the practice group leader at Squire knew of this, and assuming these individuals are still employed there, he would not approve.
FoundPersuasive seems like an excellent source for new patent attorneys/agents. A comments section would be great; that way I’d get a feeling if other experience patent attorneys agree or disagree. I definitely don’t want to learn the wrong thing. Though if i do use examples from this website, I guess I’ll find out in feedback from the supervising attorney.
“If a third party sent in prior art in an application YOU were examining, what would happen? Are you allowed to look at it? WOULD you look at it?”
That depends on how they “sent in prior art”. I doubt they could get the art sent directly to me, except perhaps by finding my email address. However, if they did send it in, for instance by email, then sure I would probably look at it. Yes I’m allowed to look at any art at any given time.
However, I would not officially “consider” the art in reference to that application’s prosecution IF a NOA had been sent out. If no NOA was sent out yet then I’d print out the art, put it on my shelf, and then cite the art, if I thought it was applicable, the next time I looked over the application.
“What do examiners do in this situation?”
That depends entirely on the level of “care” and “intelligence” possessed by the examiner in question.
That said, it is entirely inappropriate for you to take that course of action. The appropriate thing to do is to send a copy of the reference to the attorney in the case (or applicant if pro se).
That is called a “poor man’s opposition”.
@ Not persuaded: Much of our work is available though public PAIR anyway.
I think it is useful to have a place to discuss the success rates of various strategies with other attorneys. What works in one art unit won’t always work in another. It also allows us to spot examining trends and tailor our responses to fit those trends.
Sounds great to me.
According to the PTO registered agents list and the firm’s website, at least Mssrs. Leonard and Patel of Found Persuasive are employed by Squire Sanders in Virginia. I wonder if the firm knows of and/or approves of this site?
I think patent attorneys who give away their work product for free are idiots who deserve to go out of business.
Found Persuasive needs to add comments.