Changing the USPTO Count System: Incrementally

USPTO Director David Kappos has announced a set of proposed changes to the patent examiner count system. The proposed changes are not dramatic, but they may have some incremental benefit of reducing RCE churning (see below). The proposal also provides for an additional hour of examination time per case with the expectation that the added time will be used up-front in an interview or in preparing a quality first office action on the merits (FAOM).

The Count System: Under the current count system, examiners receive "counts" for various actions and must meet a certain quota every two-weeks. (The quota varies according to art unit and examiner grade.) Under the rules, one count is awarded when the examiner issues an initial office action rejection and a second count is awarded when the case is disposed-of. Because no counts are awarded for second or subsequent office action rejections, the current system is supposed to encourage examiners to quickly move a case to its conclusion.

RCE Churning: When an applicant files a request for continued examination (RCE), the examiner receives a count as a disposal. At that point, the current count system treats the application as new - thus the examiner can receive a second count for mailing another office action rejection and one more count for eventually allowing the application to issue as a patent. Thus, by "forcing" the RCE, the examiner receives four counts instead of only two. (Note - "Forcing" is in quotation marks because examiner's do not actually applicants to file RCEs.) A similar practice takes place with restrictions where the examiner pushes an applicant to divide a single patent application into multiple applications. In that scenario, the examiner can at times earn multiple counts for reexamining what are essentially identical inventions.

The proposed package would make some modifications - focusing especially on RCE practice. Under the proposal, the first RCE would only be worth 1.75 total counts (rather than 2) and any subsequent RCE can only be worth 1.5 counts. Examination of the original application would still be worth the same 2 counts, but the distribution is slightly shifted. Under the proposal, the first office action on the merits (FAOM) would garner 1.25 counts; a final rejection earns 0.25 counts; and eventual disposal leads to 0.5 more counts. If no final rejection is issued, then the disposal would be worth 0.75 counts. Thus, examiners will still receive credit for examining RCE's - just less credit than before. The proposal does not appear to address the restriction practice.

Encouraging substantive interviews: The proposal would also regularly grant one-hour of "non-examining time" for preparing for and conducting interviews. This would effectively reduce the examination quota of examiners who conduct interviews.

Examiner Mistakes: The PTO management appears to have come to an agreement with the examiner union POPA on these reforms, although the membership will still be asked for their approval. Interestingly, the documents distributed by the joint task force appears to show some changes on the review of examiners for mistakes in office actions. Notably, the proposal would not allow an examiner to be negatively treated "based upon a single clear error in Patentability Determination" even if the examiner has already received a warning for prior mistakes.

The proposal also includes a new "formal policy" of "working on the earliest filed applications on [an examiner's] Regular New Case docket first." This would block the game played by some examiners of cherry picking easier cases to examine earlier.   

Documents: briefing_for_corps_final_draft-093009.pdf

Comments

[YT]

This is hot

[6]

Everyone who reads this should be made aware that the phrase ""forcing" the RCE" is most often only used in the context of an after final amendment being denied entry because it would require further search and/or consideration.

That is to say, there is no way to really "force" an RCE, there is only a way to prevent an after final amendment from being entered, and this method is considered 100% legitimate.

[6]

"The proposed package would make some modifications - focusing especially on RCE practice. Under the proposal, the first RCE would only be worth 1.75 total counts (rather than 2) and any subsequent RCE can only be worth 1.5 counts. Examination of the original application would still be worth the same 2 counts, but the distribution is slightly shifted. Under the proposal, the first office action on the merits (FOAM) would garner 1.25 counts; a final rejection earns 0.25 counts; and eventual disposal leads to 0.5 more counts. If no final rejection is issued, then the disposal would be worth 0.75 counts. Thus, examiners will still receive credit for examining RCE's - just less credit than before. The proposal does not appear to address the restriction practice."

Yeah POPA will eventually reject the package. Or their "membership" will.

The thing that some people don't seem to understand, either by ignorance, or by lack of comprehension, is that some AU's depend nearly entirely on RCE's to make production. Without them counting for the full credit they do, entire AU's would almost instantly be way under production.

Now, my AU isn't exactly all that bad about that. But there are certainly other ones that are.

Even so, I would vote against it. .25 at final and an hour isn't enough to make up for the loses at RCE. It would be nothing more than a swindling deal. .5 at the least with 2 hours and that's as low as I personally will be willing to go. AND HE'D STILL BE MAKING OUT LIKE A BANDIT! .5 is entirely too generous of me on my part.

"The proposal also includes a new "formal policy" of "working on the earliest filed applications on [an examiner's] Regular New Case docket first." This would block the game played by some examiners of cherry picking easier cases to examine earlier."

Deal breaker in and of itself. The "cherry picking" is what allows the current production system to exist at all. You need the ability to slightly manipulate the order in which cases on your docket go. Having to take them in order will render some (few?) people get an unlucky streak in their case lengths horrible production.

A good shot Kappos, and good that you're at the bargaining table and got the fat man to sign off on it. That's step 1. Step 2 is getting the corps to accept it. Step 3 is keeping (nearly?) all your employees at the job lest you find yourself in the unenviable position of having to hire and train new examiners with no money to do so.

I'm confident that you're smart enough to avoid a catastrophe on step 3. But I'm also confident that this measure will not pass the corps as a whole unless there are substantial provisions D isn't telling us about and which I haven't read about just yet. I'm going to go read it now.

[6]

D you could at least get the information right:

"Start by adding 2 hours to each examiner’s FY09 Hrs/BD at their position factor"

That reads 2 hours. Not 1 hour.

[6]

"– Add additional time, if necessary, to account for reduction in RCE counts so that
every examiner gets at least 1 net additional hour over their FY09 expectancy
(Hrs/BD at their position factor)"

Alright it appears that the deal isn't quite as sour as D makes it out to be. Perhaps this will pass the AU's who rely on RCE's currently to meet production (and all their friends who look out for them).

[6]

"The recertification program will be discontinued. Emphasis
will be shifted to front-end quality efforts."

Hello, looks like he just bought himself some primaries and their votes.

Overall though, things are looking good as I work my way down.

"Office actions that require the signature of another must be posted
prior to midnight of the second Saturday of the biweek. SPEs may
provide guidance regarding a reasonable amount of time they require
for a guarantee of review and counting of work."

Okay, he may have just lost my vote again, I was thinking things looked ok. But hmmm, idk.

Idk, his whole deal on workflow seems nothing short of bogus. Workflow is doing just fine, or is bad enough already, depending on your point of view.

"Within a six-month filing date window of the earliest filed application, you
may use your professional discretion to work on applications out of order if it
leads to efficient examination."

That isn't so bad I suppose. Not as bad as D's limited summary had made me think this requirement would be.

"RCEs filed on or after a date to be determined will be placed on the Special
New Case docket."

That I am against. Any more workflow shinanigans are uncalled for. If my SPE has some reason that he wants an app taken up soon, then he may request it and I'll try to work on it. There is no reason for a "point system" operating in the background WHERE WE HARDLY EVEN KNOW WHAT GOES ON WITH IT UNLESS THE SPE GOES OUT OF HIS WAY TO TELL US. And even less reason for making it worse than it already is. Now, if PALM were made a bit better to tell us which cases were eligable to ding us for a workflow point then I might revist my position on this. The current notification system is practically the same as it was 20 years ago. Nonexistant. For such an easily automated task it's really a shame that it hasn't been done yet.

In any event, I strongly oppose any workflow changes until such a change is made to the notification system.

"􀂄 Increase examiner morale leading to reduced attrition"

The changes you're suggesting are OK, maybe. But they're hardly anything that shifted my moral up. The potential for increased shinanigans probably outweighs the one hour, which is the centerpiece of the changes.

And why on earth he would move the cutoff to sat night I have no idea about. If you're going to move it in that direction then move it to 5pm on Friday, or midnight on Friday. Moving it to Sat night is just rtarded. It's like, "here let me allow you the chance to ruin your fri. night and sat. night by coming in to finish up work, but I won't allow you to ruin your Sun night to do it". W T F?

[6]

And just for the record, with this plan the ind. commission coming shortly is still going to rip us a new arse hole when they get here.

[bluto]

6, 2 hours per BD is one hour per count.

Also interesting is the chart (p. 8) that shows the average mix of FAOMs for the examining corps is 73% regular FAOMs, 20.3% 1st RCE FAOMs, and 6.8% 2nd or later RCE FAOMs. So as far as the RCE churning phenomenon, this suggests that 73% of cases don't go to RCE, 27% of them do. That doesn't really sound like the "RCE gravy train" is that widespread of a problem.

Apparently 23 hours per BD (11.5 hours per count) is the corps average.

[6]

The one last thing I would say about this plan is that it will be very interesting to know how they plan to ensure that we'd be getting an extra hour. How can they predict which cases will get an RCE and which won't? Or will it all be determined retroactively at the end of the quarter? If so, wouldn't that destroy the ability to predict what your actual production is going to be at the end of a quarter?

I think it might.

Also, one other thing, something rather major, but I don't remember what it was because someone just came in my office and interupted me. I'm sure I'll remember tomorrow. But, I'm done for the year (was waiting on an attorney to get permission for an examiner's amendment then had mah class :( ) so I'm outta here.

"6, 2 hours per BD is one hour per count."

Yeah I reread it and forgot to make sure to post about it, sorry, that was supposed to be at the top of my second post.

[6]

"That doesn't really sound like the "RCE gravy train" is that widespread of a problem."

Of course it isn't. People just like to make it out to be, probably because they're problem "customers". And Kappos is responding to the perception. Of course, 25% or so could be brought down a good bit, and even 25% is like a hundred some thousand cases.

[6]

Sorry, not "second post", "fourth" post.

[can't sleeeeep]

I just crunched the numbers a little bit, and for an expectancy of 23 hours/BD under the current system (25 for the new), an examiner currently gets 23 hours for each of the initial round of examination, 1st RCE round, and 2nd and subsequent RCE rounds. Under the new system, the examiner gets 25 hours for the initial round, 21.875 hours for the 1st RCE round, and 18.75 hours for the 2nd and subsequent rounds.

So if a case is finished before it goes to RCE, the new system is a 2 hour gain for the examiner. If it's disposed in the 1st RCE round, it's a 0.875 hour gain over the current system. If it makes it to the 2nd RCE, it's a 3.375 hour loss compared to the current system. If I'm figuring this right, this is a better deal for examiners doing cases that make it up to 1st RCE. It's a bad deal if you have a lot of cases that go to 2nd RCE.

The re-allotment of counts (within the context of each round of examination) giving more weight to first actions, less to disposals, and partial count for finals will be good for new examiners and I imagine will help substantially with the attrition problem. It won't make much difference to older examiners, other than to make their production numbers more consistent.

However, I'm not so sure about the decreasing counts with RCEs aspect though. It's definitely dis-incentivizing RCEs, but I don't think it's incentivizing compact prosecution. If the newly de-sweetened RCE is still less bitter of a pill to swallow than doing a new case, then it's not going to be a successful way to get examiners to prosecte more compactly. This would be a better plan if that first round was bumped up in counts, say to 2.5 instead of 2.

[jguay]

Good start. Hopefully, the PTO also will monitor and enforce a low average of number of actions per disposal. Otherwise, I see only a minor "quality" benefit from this initiative for the applicants. The examiners, on the other hand, benefit hugely from getting an extra two hours per case.

[Mark Nowotarski]

Has anyone looked at how many hours are required to examine applications filed with ESDs under the accelerated examination program? Do ESDs really reduce either the workload or probability of an RCE?

[XMNR]

"And why on earth he would move the cutoff to sat night I have no idea about."

Midnight Saturday is the end of the bi-week. They're trying to diminish the biweekly end loading.

"How can they predict which cases will get an RCE and which won't? Or will it all be determined retroactively at the end of the quarter?"

The presentation says the additional examining time (in order to ensure a net at least one hour per BD increase) will be determined by the examiner's FY09 mix of actions.

[Erez Gur]

6,

I hope I am wrong, but I suspect you are missing something.

Kappos did not need this job, he's already proven that he is an excellent manager at IBM. That he accepted this job means he was promised that he would be allowed to succeed, which means reduce backlog and become profitable.

Kappos has been around a long time so he remembers pre-2003 when the RCE gravy train did not exist and patents were granted.

I hope I am wrong, but I don't think he is negotiating with the Examiners about the counts. I think he is giving you one last chance to "get with the program".

[XMNR]

Dennis said Re: restriction practice: "In that scenario, the examiner can earn multiple counts for reexamining what are essentially identical inventions."

Restricting identical inventions is improper (I'm not saying is isn't done, I'm just saying that nobody says it is correct). If there is a problem with improper restrictions, we don't need new rules, we need enforcement of the current rules.

My understanding is that part of QR's mandate on in-process review is improper restrictions.

[XMNR]

"I hope I am wrong, but I don't think he is negotiating with the Examiners about the counts. I think he is giving you one last chance to "get with the program"."

I think the negotiations are done. The committee was equal parts management and POPA officers, so my guess if the rank-and-file will take it as blessed by POPA and ratify.

But what does happen if POPA membership fails to ratify?

Also, any predictions on the increase in dues-paying membership (which makes one eligible to vote)?

[someguy]

How about we get some rule changes to go along with the new production system? This new system appears to really "encourage" examiners to allow something the first round. Many times that's out of the examiner's control either because they can't get the ok from someone with sig authority or the attorney's amendments barely overcome the portion of art used last time and may not even overcome art already cited but not used in rejecting the last claims.

I propose letting examiners go first action final after RCE if the amendments by applicant does not patentably distinguish over art already of record--not art used in the rejection last time, but any art cited by applicant or by the examiner on record already. If the claims initially presented for examination don't patentably distinguish over art cited in applicant's IDS or admitted prior art in the spec, then first action final should also be allowed. This should also encourage the examiner to do as thorough a search as possible as soon as possible.

If after a number of rounds of RCE the attorney still can't present a claim that's allowable, the examiner should be able to send the case to the Board (with SPE or Director's approval). If applicant lose at the Board, they either have to pursue the matter in court or go to the back of the queue by filing a continuation. If the examiner lose, the case automatically gets allowed without going back to the examiner unless the Board enters a new rejection necessitated by a new court decision.

Make reviewing junior examiner cases part of the primary examiner's PAP. Too many primaries won't give any junior examiner help partly because the amount of other time they're allowed to claim doesn't reflect the amount of work they have to do.

[MaxDrei]

It's impertinent of me to add to this thread because I don't prosecute at the USPTO but, Somegiuy, my attention was taken by your.....

they either have to pursue the matter in court or go to the back of the queue by filing a continuation

I'm thinking that some Applicants (pharma) really do want to delay issue as long as possible. Making Rules that "work" for those who would string prosecution out interminably if they could, and work just as well for those impatient to see cases going to issue with despatch, strikes me as very difficult for the good Mr Kappos to engineer. In other words, what is a "stick" for one Applicant is a "carrot" for another.

Does your proposal work, in that sense?

[Yo Quiero Taco Bell]

"I propose letting examiners go first action final after RCE if the amendments by applicant does not patentably distinguish over art already of record--not art used in the rejection last time, but any art cited by applicant or by the examiner on record already. If the claims initially presented for examination don't patentably distinguish over art cited in applicant's IDS or admitted prior art in the spec, then first action final should also be allowed. This should also encourage the examiner to do as thorough a search as possible as soon as possible."

Lol wut? So I'm supposed to guess what unreasonable ways an examiner might tie together references now? And I get finaled if the examiner thought it was reasonable to tie together 4 references, including a reference directed to a dvd drive and a reference directed to an oven timer?

[Jules]

Good lord man...

6, you've done a great job littering up the board. Have you ever heard the saying "Wise men talk because they have something to say; fools talk because they have to say something." That's a rhetorical question.

[Interested Party]

"If after a number of rounds of RCE the attorney still can't present a claim that's allowable, the examiner should be able to send the case to the Board (with SPE or Director's approval). If applicant lose at the Board, they either have to pursue the matter in court or go to the back of the queue by filing a continuation. If the examiner lose, the case automatically gets allowed without going back to the examiner unless the Board enters a new rejection necessitated by a new court decision."

I like this idea. I'm not sure of the fairness to Examiners in those rare situations where RCEs are continuously filed in a case with no patentable subject matter. If you're reducing Examiner's counts for each subsequent RCE, Examiner's should be able to at some point put a stop to it by either sending it to the board or forcing a separate continuation. Maybe on the third RCE?

[Noise above Law]

Jules,

Your absence has been noted - thanks for the note that 6's absence would be noted, but for the stated reason.

But you better be careful - Malcolm may now consider you to be a TROLL.

[6]

"Midnight Saturday is the end of the bi-week. They're trying to diminish the biweekly end loading."

Then simply make it so that you can't turn in but a set amount of your production every 3 days or whatever. It's amazing how simple solutions pass people by and we get stuck with some "this won't do what we want it to but hey we can do it just to be an arse" plan. Stopping end loading in its tracks isn't exactly rocket science.

"The examiners, on the other hand, benefit hugely from getting an extra two hours per case."

Any benefit to the examination time is a direct benefit to the applicant unless the applicant wants a shty patent. You're getting more for your "money".

In any event it isn't the worst thing in the world, and without popa going off about it then it'll probably pass.

[me]

Very nice start.

I also think the Examiner should recieve a count or partial count for an after final advisory action. Examiners do not do these well, and increse prosecution time and cost by both not providing a quality response, or worse, not examining the after final response at all and stamping it with "new search required."

[Andrew]

I have created a preliminary PDF to explain how this system is probably actually worse for examiners. I will post it shortly. But a brief key point of the PDF:

Examiners will get 1.75counts/BD for a first RCE which increases the amount of work examiners must do to meet old production standards by 12.5% ([0.25/2]*100). By new production standards, it increases the amount of work the examiner must do by around 2.5-7.5% depending on the examiners respective BD.

Examiners will get 1.5counts/BD for a second RCE which increases the amount of work examiners must do to meet old production standards by 25% ([0.5/2]*100). By new production standards, it increases the amount of work the examiner must do by around 15-20% depending on the examiners respective BD.

[XMNR]

Two potential problems for prosecutors:

1. RCEs will be going on our "Special New" docket, rather than our "Regular Amended" docket.

Regular amended cases have a two-month deadline for examiner action (one-month for those of us trying for the pendency reduction bonus). Examiner's must work their oldest "special new" case every other bi-week (each bi-week for the pendency reduction bonus). This plus the reduced count total for RCE cases will mean increased pendency for those applications.

2. Added incentive to go 'Final' will mean (more) improper final rejections.

Currently there is incentive to go 'final' since it moves the case toward disposal and a count, but the gratification is delayed and the time spent on the instant action isn't getting anything for the examiner.

I would imagine that more examiners will make second actions final improperly under the new scheme in order to get the fractional count.

I hope the PTO is prepping for more withdrawal of finality petitions.

[jguay]

Andrew, I am not buying any whining about losing RCE counts. If an examiner does a thorough search of the invention at first action, the chances that an RCE will be necessary diminish greatly.

I speak from experience, because when I was at the PTO I was taught the bad way by my "supervisors" and some lazy primaries, and I "counted" on a number of RCE (formerly FWCs) to make production. [I still find myself apologizing to people I meet out here for being such an arse years ago.] When I changed my ways about two years from becoming a primary, the amount of RCEs I received plummeted, but I was still able to make outstanding production and provide a quality search/examination.

These initiatives are a nudge in the right direction, but more will be needed.

[Malcolm Mooney]

"Encouraging substantive interviews: The proposal would also regularly grant one-hour of "non-examining time" for preparing for and conducting interviews. This would effectively reduce the examination quota of examiners who conduct interviews."

This will not work out well in the long-term if the interviews are not recorded. Fix it, Kappos.

[XMNR]

"If an examiner does a thorough search of the invention at first action, the chances that an RCE will be necessary diminish greatly."

Not only that, who can disagree (with a straight face) that RCEs are way, way, way easier to work than a new FAOM?

I think the added time makes up for the diminished RCE count, although I may be in a low RCE art compared to some. I know that in my five years here, I have only one case that went to a third RCE and one that went to a fourth, and in that case the fourth was in order to get references from a foreign search considered of an already allowed case (in a other words a *very* easy two counts.

[Michael Valentine Smith]

For any primary or SPE that came in on count Monday & found 10-15+ cases in their count box (even though they had emptied it on Friday or Sat), or had examiners coming in all Monday morning with "just one more case to get counted" would understand why the change to midnight Sat is needed. I used to often come in on Sunday & make sure everything was counted & would still have a bunch of cases on Monday morning to review.

Some SPEs tried to implement this in their AUs years ago but were forced to stop it because of POPA.

Stopping cases from being turned in late gives the reviewer a chance (if they are willing to take it) to have enough time to review the cases more carefully.

6, the idea of having to turn in a set amount every 3 days is somewhere between naive and utter stup1d1ty. Many newer examiner get more than 3 days to do a case. How would you figure leave & meetings & everything else that would royally scr3w things up in your microscopic count idea?? You would basically wind up having 3 day "pay periods" under your "idea".

MVS

[jguay]

MM and DC, one hour of non-examining time has always been granted for personal interview; and a couple of years ago, I believe, one hour was given for telephonic interviews.

What is with your fixation on recording interviews? While I believe interviews should be rare (the number of these also plummeted after I spent more time up front examining the invention), they are helpful to explain points of the law to the examiner in an informal way. I like that. If I could not do it this way, I would not conduct interviews for fear that every peripheral thing I say in an explanation would be used against me.

[MaxDrei]

Malcolm writes:

....not work out well in the long-term if the interviews are not recorded.

to which I reply that inadequately minuted interviews are OK just as long as no deference is given, post-issue, to the work of the Examiners, pre-issue. But the combination of inadequately minuted interviews plus deference (absent clear and convincing evidence, claim resists all assaults on its validity) is offensive to common sense.

Why not go the whole hog? Switch to the Japanese way: unrestricted unminuted interviews? What's wrong with that? Cases would go through to issue a whole lot faster. What third parties don't know happened can't bother them, can it?

[Blimpy]

"the added time will be used up-front in an interview"

As noted below, except for continuations, an interview before the first action is, and has always been, frowned upon.

37 CFR 1.133 Interviews.
(a)

...

... (2) An interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application or the examiner determines that such an interview would advance prosecution of the application.

I don't understand why PatentlyO keeps promoting the (erroneous) notion of interviews before the first action. Heck, Mooney has already expressed his displeasure at interviews, why on earth would he want one before the first action - talk about a perfect opportunity to corrupt the objectivity of the examination process... sheesh.

[Blimpy]

"Fix it"

Fix yourself before you wreck yourself Mooney. Recording interviews is a silly idea borne from nervous hand-wringing paranoia, you know, the kind you are so fond of in your dark creepy world of trolls, and such.

[rb]

6, the idea of having to turn in a set amount every 3 days is somewhere between naive and utter stup1d1ty.

That's why he suggested limiting the amount that could be turned in over that time period, rather than requiring a minimum amount. Big difference.

As to the changes overall, I think they're not likely to result in any significant improvement. The real problem, IMO, is that the hrs/BD/AU has not been reassessed in a long time. Changing the count system won't fix this. It's clearly just the easier solution.

[Michael Valentine Smith]

jguay,

A minor correction. Yes, examiners are given 1 hour for interviews, both in person as well on the phone. HOWEVER, they are ONLY for _applicant initiated_ interviews. If the examiner gives the applicant a call for an amendment, for example, no other time was supposed to be given. This allows the hour of other time to be given for _examiner initiated_ interviews in addition to applicant initiated ones.

MVS

[jguay]

Oh, thanks MVS. Let's hope that these interviews are limited only to patentability issues (i.e., no time for calls dealing only in formalities).

[Inspector Clewseaux]

Nothing can go on in interviews that won't eventually make it into the record. As I said before, next thing you know Mooney will want all cocktail party conversations recorded.

Where was your outrage at the improper communications with a previous PTO Director by interested parties during an ongoing litigation and related re-exam?

As I have always suspected, you're simply a mildy bothersome sleazebag with more opinions (and monotonous expressions thereof) than brains.

[None]

jguay,

We try to have a life here. You should try it sometime.

[jguay]

None, you are only hearing part of what I envision for the PTO. I'm not all doom and gloom, lol. There are other things that must be done for this to work realistically.

And ask the people who knew me there. I had a good time while at the PTO!

[yet another XMNR]

"Let's hope that these interviews are limited only to patentability issues (i.e., no time for calls dealing only in formalities)"

jguay- Why be picky about only giving time for patentability issues? Are you saying formalities don't take any time to fix? If that's the case, why do so many of the cases I examine have ridiculous amounts of formality errors? How about we both give the applicant their money's worth and you proofread the application before filing it, and I'll spend the time I save (i.e. not checking if reference characters are mentioned in the spec) doing a more thorough examination. Sound like a deal?

[6]

"Regular amended cases have a two-month deadline for examiner action (one-month for those of us trying for the pendency reduction bonus). Examiner's must work their oldest "special new" case every other bi-week (each bi-week for the pendency reduction bonus). This plus the reduced count total for RCE cases will mean increased pendency for those applications."

That depends on the length of your current special new tab at any given point in time. But you're right that it *could* cause pendency to increase for those cases.

"I would imagine that more examiners will make second actions final improperly under the new scheme in order to get the fractional count."

Negligable I'd say. With the new found steady stream of counts from finals anyway it shouldn't be a big deal. Especially not for .25 counts.

"Andrew, I am not buying any whining about losing RCE counts. If an examiner does a thorough search of the invention at first action, the chances that an RCE will be necessary diminish greatly. "

I don't know man. That just hasn't been my experience. You can always do more searching, and you'll always be getting better at searching. That is, if you're any good at the job. Just like an attorney, someone who has been at it for 40 years usually knows how to argue a case better than a person right out of law school. They got better over time. RCE's stretch out over the course of years, usually not months.

Either way though, I don't think that it matters. Examiners will simply adjust the amount of how much they care about the case. Kappos can give 2hrs for a case if he so desires. The quality of that particular action will reflect the time given. If he wants low quality RCE actions/allowances then so be it. And when OPQA comes a knockin' the examiner says: You gave me 1.75 counts for a bd (7/8), you got 7/8 quality. And then there's nothing anyone can do about it except go back to the old.

The truth of the matter is, like it or not, the application is simply never going to be "examined" "thoroughly". The claims are examined "thoroughly". Some arts not withstanding and perhaps speaking mainly only to my art and arts like it. Reason being in large part that an applicant can file an application and have a disclosure so large that it overlaps a dozen subclasses all with thousands of patents in each. What you'll get, if you're lucky, is a subclass search on the subclass where the current claims are classified and then a word search through the dozen classes. That's if you're lucky and you get a top notch job done. Of course if you file and the case comes to me you'll also have your first ind claim invalidated by a google search, that's complimentary. Now, after this is done this applicant can then, at his leisure, cancel all claims and claim an invention classified in a different subclass, but where this is still the same embodiment in the app (thus restriction severly frowned upon even if a combo/subcombo will work). This can, and does happen all the time. The entire case is now reclassified simply by changing the claims, and this mandates that different subs be searched in their entirety.

In addition to these "I just changed the "invention" so much that the classification is now completely different" amendments, you'll see the amendments where you'll still be searching in the same subclass, or in your cases that you flagged from the previous search, but that will still require substantial work to handle properly. These include inherency situations where you may need additional extrinsic evidence to convince yourself or put on the record, some recitation of a range of values, amongst others. Those kinds of searches, especially if the limitations are now in an ind (where using some caselaw about ranges is frowned upon) take substantial time to sift through, even if you already have a pool of refs to look through.

So the bottom line is, there are other reasons beyond a simple "this wasn't searched thoroughly" for the need to re-search the case. And these are not negligable.

Now you'll say "well 6 you were supposed to check all 12000+ patents the first time through". That's not how things work around here, sorry. We prioritize the mandated search based on where you draft the claims to. The rest of the search is gravy. And when search time runs out, the search is over unless I feel like going above and beyond on my time.

Oh and XMNR, I can deny that RCE's are way way way easier depending on the case. Sure, some are easier (usually these are the ones where substantial narrowing amendments are made) than others, but on the whole, I try to give them their money's worth in reconsideration. Take a look at the classification, make sure I still agree with what was done previously, try to goggle the new ind etc.

I won't say that there are a whole lot of examiners that necessarily do this though. Never the less, you can do it.

However, I have good news for everyone. I am about to extend my talents to solve the office's problems.

In fact, I came up with quite a plan just today. I'll type it up later. In any event, the FY is over, and it is definitely almost time to go home and sleep. For awhile.

[lcp]

Just ne thing: I don;t see any discussion o fAttorneys who depend on RCEs for fees, and will not amend nomatter how many interviews the Examiners have to encourage this. How about this side of things? And, Judge Michel noted it is 14 companies (including IBM of course) running patent policy. Check out this play: (THE IBM CENTER FOR TH EBUSINESS OF GOVERNMENT) http://www.businessofgovernment.org/index.asp

[6]

"For any primary or SPE that came in on count Monday & found 10-15+ cases in their count box (even though they had emptied it on Friday or Sat), or had examiners coming in all Monday morning with "just one more case to get counted" would understand why the change to midnight Sat is needed. I used to often come in on Sunday & make sure everything was counted & would still have a bunch of cases on Monday morning to review. "

So change it to fri at 5, not sat at 12. Why half as everything we do here?

[Malcolm Mooney]

jguay: " If I could not do it this way, I would not conduct interviews for fear that every peripheral thing I say in an explanation would be used against me."

In other words, you want to be able to present your particular views re, e.g., claim construction to the Examiner without any consequences whatsoever, unless those consequences are 100% favorable to you.

Sure, that's fair.

[Noise above Law]

Some easy beat on 6 time:

6, Your famoosity doesn’t seem to be helping you with your own kind:

Jules: Have you ever heard the saying "Wise men talk because they have something to say; fools talk because they have to say something." That's a rhetorical question.

MVS: “6, the idea of having to turn in a set amount every 3 days is somewhere between naive and utter stup1d1ty.”

Perhaps the message from Lord Kappos is sinking in and your own kind are realizing what a cancer you are.

More 6 nonsense:

“And then there's nothing anyone can do about it except go back to the old.”
– Sorry 6, change is here – ain’t no goin’ back. Get used to it.

“The truth of the matter is, like it or not, the application is simply never going to be "examined" "thoroughly". The claims are examined "thoroughly".
– Back to this again? C’mon 6, you want more LAW beating?

“So the bottom line is, there are other reasons beyond a simple "this wasn't searched thoroughly" for the need to re-search the case. And these are not negligable.”
– Not if you do the job up front that you are required to by LAW.

“Now you'll say "well 6 you were supposed to check all 12000+ patents the first time through". That's not how things work around here, sorry. We prioritize the mandated search based on where you draft the claims to. The rest of the search is gravy. And when search time runs out, the search is over unless I feel like going above and beyond on my time. “
– Of course, you have prioritized the mandated search, that’s understandable – but that mandated search is not just the claims as you want to hold. The rest is not “gravy”. It is the LAW.

“… try to goggle the new ind etc.”
– yeah, that’s a lot of work

MaxDrei,

Notwithstanding your recent slippage into Malcolm worship, I am still reading your comments seriously. In that context, I am responding to your comment regarding Why not go the whole hog? …unrestricted unminuted interviews? What's wrong with that?”:

For starters, It’s against the US Rules. See 37 CFR § 1.2 Business to be transacted in writing.

As to why this is important, see the thread at: http://www.patenthawk.com/blog/2009/06/unappealing.html#comments

[Malcolm Mooney]

Inspector: "Where was your outrage at the improper communications with a previous PTO Director by interested parties during an ongoing litigation and related re-exam?"

Also improper and wrong, and you can find my previous expression of that sentiment in the archives.

As for the "outrage" I'll leave that to the unhinged commenters who blow a nut every time they get a rejection they don't like. I try to keep an even keel.

[Noise above Law]

XMNR,

Nice job - I appreciate an examiner who can post and not come off like an "unhinged commenter" like 6 and Malcolm.

[XMNR]

6 said: "So change it to fri at 5, not sat at 12. Why half as everything we do here?"

First, MVS - thanks for setting 6 straight on reviewing cases.

6, dude, the bi-week ends at midnight Saturday. You are allowed to work regular examining hours on Saturday. Therefore, the deadline is midnight Saturday. They couldn't make it before that or POPA would (rightly) scream their heads off.

[BigGuy]

"Just ne thing: I don;t see any discussion o fAttorneys who depend on RCEs for fees, and will not amend nomatter how many interviews the Examiners have to encourage this. How about this side of things?"

Hmmm... I'm doing just fine with fees for responding to one action-after-reopening-of-prosecution after another. I really don't need fees for filing RCEs, thank you.

Besides, I don't follow your logic. If the applicant doesn't amend, but files an RCE, then go final on the first action after the RCE. What's the problem?

The PTO can force an applicant to take a bad case to the board. The applicant can't force the PTO to take a bad rejection to the board.

Is there something you'd like to add to "this side of things"?

[A plurality of thresholding units]

"Back to this again? C’mon 6, you want more LAW beating?"

6 isn't the only one who doesn't do examinations that are as thorough as you would like, Noise. Those few examiners who don't learn *not* to be that thorough usually quit before they get fired for not making production.

[Michael Valentine Smith]

XMNR,

thanks. You beat me to it with the response. Glad to see others that do not fall into 6's warped ways of thinking & doing the job.

MVS

[6]

"Of course, you have prioritized the mandated search, that’s understandable – but that mandated search is not just the claims as you want to hold. The rest is not “gravy”. It is the LAW."

Well fine then Noise you can fire my whole TC for not ever doing a "thorough" search as per your lawl. I don't have a problem with that.

Why don't you just sit still and admit that you have no problem with my way of searching and that you just talk simply to argue with me. I assure you that were you to find yourself doing exactly as I just told you happens (quite frequently actually) then you yourself would be the one requesting that I search additional subs or go back through the hundred loosely related refs that I have saved for your app. And you'd request it as soon as I brought the issue to your attention. For all your nonsense I know how your kind behaves irl. That's why you'll never debate me irl.

And Jules, so sorry about junking up your precious interwebz. Besides, these are really my interwebz so far as I can see and I can junk them up all I want to. In fact, I'm not completely convinced you even have any interwebz at all, from my point of view they're all mine and they likely exist inside of this machine right beside me. It was late at night and I was rather excited to learn the news.

"6, dude, the bi-week ends at midnight Saturday. "

Kappos gets to decide when it "ends". Make it end at 5 on Fri. How hard is this? Jeus, you guys are like little children.

In fact, just throw that change into the "proposal" and I'm sure the fat man will sign off on it no problem since he's already in love with the nonsense currently in there.

[6]

"– yeah, that’s a lot of work"

Actually it can be a lot of work. Tracking down your specific little piece of art from NPL citation backwards searching takes time. Trust me. Yet it is a very effective way to get great results.

[Rex]

Here's what I consider to be the basis for the RCE problem. It used to be that I would get both 102 and 103 rejections for the same independent claims. That would allow me to understand the examiner's reasoning, point out why the 102 rejection was wrong (90% of the time), and amend if necessary to overcome the 103 rejection. That's a good start to prosecution.

Nowadays, I get a 102 rejection that is wrong. I counter, sometimes amending to clarify a point that I can see could lead to trouble down the road. In return, I receive a 103 final rejection. In order to advance prosecution, I am forced to file an RCE.

Filing an RCE in a case is now the routine and not the exception.

So if any of Kappos's changes improve the quality of first actions, I will applaud loudly.

[jguay]

6, your job is not to search every patent. By thorough I mean searching the relevant subclasses, which is usually spelled out in the classification manual (but I'm not sure if this is still done). You also should use text searching in a meaningful way to eliminate references in very large subclasses (which in theory should not exist - another PTO problem). Nothing can be perfect, given the amount of time, but your work should pass the laugh test (no-reopening after appeal).

It takes experience, sure, but inexperienced examiners are given more time per BD to account for some of this (bite the bullet on the rest like every working stiff).

As time passes and classification matures and evolves, the search time should remain roughly the same. Increased specialization.

MM, go ____ one. I don't work that way, and an examiner is the one who fills out the interview summary form.

[we've been over this...]

"In order to advance prosecution, I am forced to file an RCE. ...
Filing an RCE in a case is now the routine and not the exception."

This is like feeding the pigeons and wondering why they keep cr@pping on your shoes. File appeals!

[2600examiner]

I went through the trouble of calculating my production using the new system (a lot of work especially since I also have a split docket). My results are (with 1445 examining hours):
New system: 110.45%
Old system: 114.35%

[jguay]

It appears, 2600, that you have had too many RCEs in the past. Better change that! LOLOL

[A plurality of thresholding units]

jguay: "As time passes and classification matures and evolves"

I'm pretty sure the opposite is happening.

Classification doesn't get updated frequently enough to account for new areas of art, and existing rapidly-growing subclasses don't get sub-subclassed to reduce subclass size. All the while, more and more patents and publications are getting classed in these places (and many of the publications are misclassed, frequently in the wrong subclass but sometimes even in the wrong class altogether).

When a class or subclass "matures", it's a sure sign that the relevant art is also mature (or even obsolete).

[Malcolm Mooney]

jguay: "an examiner is the one who fills out the interview summary form."

Oh, so you don't submit your own interview summaries?

That's interesting.

[2600examiner]

"It appears, 2600, that you have had too many RCEs in the past. Better change that! LOLOL"

The real explanation is that I was such a good examiner in FY2008 that I've been living off of disposals. Front loading the counts for brand new cases puts that type of production at a disadvantage.
New FAOM: 26
1st rce FAOM: 28
2nd rce FAOM: 3
Allowance: 25
Pure abandonment: 19
RCE abandonment: 30

I don't expect much to change. Counts after RCEs are like cake, whereas counts the first go-round are like broccoli. 1.75/1.5 counts aren't going to make examiners hungry enough to forego that cake.

[jguay]

Yes I do. My point is that if the examiner feels there is an issue that needs to be presented, it can and should be presented in the form. Stop assuming everyone thinks like you, MM.

I think MaxDrei summed this up nicely.

[6]

"Nowadays, I get a 102 rejection that is wrong. I counter, sometimes amending to clarify a point that I can see could lead to trouble down the road. In return, I receive a 103 final rejection. In order to advance prosecution, I am forced to file an RCE."

That is a direct result of a "policy" of presenting only the best rejections as subjectively determined by the examiner. If you'd rather have 6 rejections per ind per FOAM then get us the time to write them and we'll do it. Supposedly that policy is to save you guys time writing responses as well.

"By thorough I mean searching the relevant subclasses"

What happens when "the relevant subclasses" contain about 50000+ patents? I'm talking about literally, not figuratively or to be bsing you. This is not a made up number. I can pull a case right now at random from a number of cases on my docket and show you one with the relevant subclasses containing this many refs.

I'll tell you what happens. We prioritize based on what you have specifically claimed. Sometimes this means word searching. There is simply no realistic way to take issue with this method. I'm sorry, there just isn't. And this doesn't "thoroughly" examine the spec. It examines what are in your current claims. Sorry, it's the only available method of dealing with the volume of art sans looking through each and every one of the thousands of refs.

Take for example this kind of claim a friend of mine is working on for instance. A hypothetical claim reads:

This example removed due to a copyright claim by the owner.

"Nothing can be perfect, given the amount of time, but your work should pass the laugh test (no-reopening after appeal)."

These days my work always passes the laugh test. And reopenning after appeal would have no bearing on that. Reopening after appeal would simply be because I made the wrong rejection as the "best" rejection as subjectively determined by my spe and/or conference guy.

"As time passes and classification matures and evolves, the search time should remain roughly the same. Increased specialization."

See that's what happens in theory, but the classification is STUCK IN TIME at around 1995 or somewhere around there. And even if it wasn't, you still have the issue of the overclaiming ind. with 5 dependents coming off of it each in their own sub of a thousand patents each BUT it's all one "embodiment" so there is no species restriction.

[6]

Oh yes, 2800 brings up the concern I had forgotten last night.

What about all the final cases that I did last year? Do I get a full count when it goes abandoned or do I get .5 counts? It's going to take quite a bit of work to automate handling that mess and with our budget I didn't think we had any money for that stuff.

[anon]

Mr. Mooney wrote, "In other words, you want to be able to present your particular views re, e.g., claim construction to the Examiner without any consequences whatsoever, unless those consequences are 100% favorable to you."

Every once in a while, I agree with Mooney. A lot of mischief can occur in interviews that are not adequately summarized. And what percentage of interviews are not adequately summarized? I'm guessing 99%. Any estoppel-inducing comments during the interview won't be recorded because the examiner is too busy and the attorney isn't going to put that stuff in the summary.

Every other kind of lawyer can speak in open court and deal with the consequences, but for some reason, patent attorneys shudder at the thought that they might be held to something that came out of their mouths. God forbid!

Some opponents would argue that recording interviews would deter interviews and increase pendency and backlog. Well, every other kind of lawyer has a court reporter, and they seem to do just fine. I think we'd be able to figure it out.

[jguay]

6, that is so pathetic of the PTO to let subs grow that large. This is a huge problem that is the result of misguided individuals who think classification is old timey stuff compared to text searching. That is, you are dealing with the aftermath of simplistic thinking - that pure text searching is a total replacement for class/subclass searching.

[jguay]

anon and MM, I personally insist that the reason an examiner allows a claim based on a discussion during an interview is summarized in the record. Usually, the argument I am making has already been presented in the record, but the examiner ignores or misunderstands it. Also, a summary of an agreed to issue is adequate - every word spoken in an explanation need not be entered. It would otherwise be unworkable, or, at best, awkward to record an interview as if at a deposition. I would probably never have one if this were the case.

I agree that it should never seem like the amazing Kreskin performed some magic on the examiner. I know others feel differently about this, but the examiner can and should make sure the summary is adequate. It usually takes only one or two sentences (and not simply "discussed case").

[curious]

I really don't have much sympathy for "AU's who rely on RCE's currently to meet production."

[curious]

"A lot of mischief can occur in interviews that are not adequately summarized."

What is this "mischief"? Please give examples.

In my many years of practice, I have not (knowingly at least) taken advantage of this "mischief." Maybe I have not been fully representing my clients.

[curious]

I would appreciate if examiners would post comments on what needs to be done to improve the classification system and how examination would thereby be improved.

[curious]

If the BPAI did not have such an inexecusably horrendous backlog, I would file more appeals and fewer RCE's.

[anon]

"What is this "mischief"? Please give examples."

Making an argument consistent with a narrow interpretation or one that would create estoppel (e.g., "widget 60 in the cited art is an element A, as recited in claim 1 because of this, this and this"), but somehow not making those clear disavowal statements in the interview summary.

So if you've ever distinguished a prior art component from a claimed feature in an interview, you've painstakingly made that clear in an interview summary? Please.

[LeMieux]

"Oh, so you don't submit your own interview summaries?

That's interesting."

I suppose just about everything is "interesting" when you are a simple sleazebag who doesn't know what he is talking about.

[curious]

maybe the number of counts issuing on the first OA on the merits in original applications should be increased slightly?

[Boss12]

"I don't follow your logic. If the applicant doesn't amend, but files an RCE, then go final on the first action after the RCE. What's the problem?"

You are correct. See MPEP 706.07(b). I write "First Action" Final Rejections after RCEs quite often, and I thoroughly enjoy it.

If there are any examiners or SPEs reading this, then I want to encourage you to start using MPEP 706.07(b) to your full advantage by writing as many "First Action" Finals as possible (if appropriate, of course).

[Boss12]

"The applicant can't force the PTO to take a bad rejection to the board."

The Applicant has the option of filing a Notice of Appeal and then filing an Appeal Brief.

How is that not "forcing" the PTO to take a bad rejection to the BPAI?

[we've been over this...]

"The Applicant has the option of filing a Notice of Appeal and then filing an Appeal Brief. How is that not 'forcing' the PTO to take a bad rejection to the BPAI?"

Are you serious? 37 CFR 41.39 says that the examiner MAY, within such time as may be directed by the Director, furnish a written answer to the appeal brief... The alternative is to re-open prosecution. As has been discussed many times here, this alternative is FREQUENTLY used. Furthermore, note that 37 CFR 41.43 says that if the applicant is foolish enough to file a reply brief after the examiner's answer, then the examiner is again allowed to withdraw the final rejection and reopen prosecution! I've seen this happen as well.

Bottom line - an applicant can't force the PTO to take a bad rejection to the board.

[Malcolm Mooney]

"In my many years of practice, I have not (knowingly at least) taken advantage of this "mischief." Maybe I have not been fully representing my clients."

I will leave that for you to ponder. I can tell you that in my many years of practice reviewing files of patents in the context of litigation or for the purpose of drafting Opinion letters, I routinely see poorly summarized interviews (or worse, poorly summarized, lengthy in-person presentations). If your goal is to keep potentially damaging arguments, admissions and other statements off the record, there is no better way to prosecute than to use the Interview process as often as possible.

Pretty basic stuff.

"I suppose just about everything is "interesting" when you are a simple sleazebag who doesn't know what he is talking about."

Don't pay attention to the troll, folks. Better to acquaint yourself with 37 CFR 1.113(b): " In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action **must be filed by the applicant**."

Typically those summaries are due within one month of the Interview.

[Mark Nowotarski]

1886, when the US patent office was the envy of the world http://bit.ly/PVZVS (hit the translate button if French isn't your thing)

[Znutar]

Regarding recording interviews, I agree that no application should be allowed on the basis of arguments made orally but not entered into the written record. I do not believe, however, that this mandates every spoken word in an interview should be recorded for the estoppel effect. While the analogy isn't perfect, I seem to recall from the evidence class I took all those years ago that admissions made in negotiating a settlement are inadmissable. So, at least there's one example where at attorney can make admissions and not have it held against his/her client. OMG! The horror.

But seriously, if implemented it's no big deal. You have to be a moron to make admissions in an interview against your client's interests. You can't rely on an examiner not making a record just because it typically does not happen. It would be, however, another time-wasting pain in the ass driving up costs, but oh well, so is the third non-final office action in a row. Successive non-finals seem to be "in" these days. That's got to hurt production, but it takes less time, I suppose, than wading through an appeal brief only to do so.

Jules - nice post re:6.

[don't bother]

"Better to acquaint yourself with 37 CFR 1.113(b)"

I think you mean Rule 133, not Rule 113.

The summary of the interview can be included in the response to the OA under Rule 111. There's no requirement it be a separate filing. I'm also not sure there is a due date for filing such a summary. (There may be, but I don't really feel like checking right now.)

And the examiner may waive the requirement of Rule 133(b) if the agreement reached during the interview results in the application being in condition for allowance.

[BigGuy]

"I can tell you that in my many years of practice reviewing files of patents in the context of litigation or for the purpose of drafting Opinion letters, I routinely see poorly summarized interviews (or worse, poorly summarized, lengthy in-person presentations)."

Howard Johnson is right. This seems to be particularly true for patents in the communications field in the late 90's. "Discussed patentability of claims 1-12 in view of references A, B, and C" is pretty typical. Then a notice-of-allowance issues, with a "reason for allowance" like "references A, B, and C don't disclose the features of claims 1-12", in complete contradiction of 4 previous office actions.

[Mark Nowotarski]

1880 More praise from the French for the new US process of "patent screening" http://bit.ly/19n0h7

[broje]

""Discussed patentability of claims 1-12 in view of references A, B, and C" is pretty typical. Then a notice-of-allowance issues, with a "reason for allowance" like "references A, B, and C don't disclose the features of claims 1-12", in complete contradiction of 4 previous office actions.

Posted by: BigGuy"

That's some good lawlyerin!

[Malcolm Mooney]

Thanks, db, my finger slipped when I typed the code number.

As for the rest of your comment, it's interesting but the rule is the rule and it certainly is misleading (and incorrect) to state that "the Examiner is the one who fills out the Interview summary."

Can you tell me where you found support for your statement that "the examiner may waive the requirement of Rule 133(b) if the agreement reached during the interview results in the application being in condition for allowance"? Is that just personal experience? I typically find that the circumstance you described is the case where the applicant's Interview summary is demanded (in the form accompanying the Examiner's own summary of the Interview).

[curious]

"Then a notice-of-allowance issues, with a "reason for allowance" like "references A, B, and C don't disclose the features of claims 1-12", in complete contradiction of 4 previous office actions."

Shame on the examiner too.

[don't bother]

Malcolm,

This is from MPEP 713.04:

It is desirable that the examiner orally remind the applicant of his or her obligation to record the substance of the interview in each case unless the interview was initiated by the examiner and the examiner indicated on the "Examiner Initiated Interview Summary" form, PTOL-413B, that the examiner will provide a written summary. Where an interview initiated by the applicant results in the allowance of the application, the applicant is advised to file a written record of the substance of the interview as soon as possible to prevent any possible delays in the issuance of a patent. Where an examiner initiated interview directly results in the allowance of the application, the examiner may check the appropriate box on the "Examiner Initiated Interview Summary" form, PTOL-413B, to indicate that the examiner will provide a written record of the substance of the interview with the Notice of Allowability.

In the old days, I would frequently ask the examiner to "check the box" that indicated that no summary of the interview was required.

I think they've changed that PTOL-413B since then. I'm not sure. I don't conduct many interviews anymore as they are a waste of time. The real decision makers from the PTO are never actually the interview, so why bother?

[jguay]

MPEP 713.04:

Examiners must complete an Interview Summary form PTOL-413 for each interview where a matter of substance has been discussed during the interview by checking the appropriate boxes and filling in the blanks.

....

EXAMINER TO CHECK FOR ACCURACY
Applicant’s summary of what took place at the interview should be carefully checked to determine the accuracy of any argument or statement attributed to the examiner during the interview. If there is an inaccuracy and it bears directly on the question of patentability,
it should be pointed out in the next Office letter. If the claims are allowable for other reasons of record, the examiner should send a letter setting forth his or her version of the statement attributed to him or her.

[someguy]

"I'm thinking that some Applicants (pharma) really do want to delay issue as long as possible. Making Rules that "work" for those who would string prosecution out interminably if they could, and work just as well for those impatient to see cases going to issue with despatch, strikes me as very difficult for the good Mr Kappos to engineer. In other words, what is a "stick" for one Applicant is a "carrot" for another.

Does your proposal work, in that sense?"

It would take an act of Congress to deprive applicant of their right to a patent, so I guess with my proposal, whether or not the delay would be a carrot or stick would have to be something that the SPE/Director would have to take into account when deciding whether to give the ok to send to the Board. Perhaps if the applicant lose, they also lose any patent term adjustment they might have earned for the current case. Patent terms are calculated from earliest effective filing date if I'm not mistaken, so if they delay long enough there could be more stick than carrot.

By the way, correct me if I'm wrong, but doesn't the EPO have something fairly similar in place to what I'm proposing already--the examiner being able to say, enough is enough I mean.

"Lol wut? So I'm supposed to guess what unreasonable ways an examiner might tie together references now? And I get finaled if the examiner thought it was reasonable to tie together 4 references, including a reference directed to a dvd drive and a reference directed to an oven timer?"

1. Some attorneys are able do so now with accelerated examination documents. Is your point that we shouldn't require attorneys to submit claims that are at the very least allowable over the prior art already of record because it would be too hard for you? If the examiner's combination is incorrect or unreasonable, then you should be able to successfully argue that and have the case reopened or appeal since it's under final rejection.

2. Plenty of attorneys and those in management at the PTO expect examiners to do a good enough search the first time now where they can predict every and all possible limitations that could be brought in from the spec by the attorney later on. Are you saying that you should be held to a lower standard than examiners?

[jguay]

If the ball is in the pto's court, and an interview takes place, the applicant also must file a summary of the substance of the interview within 30 days. Otherwise, the applicant must address this in the next response, unless indicated otherwise.

[someguy]

Anyone have any idea why they added 2 hours across the board for examining time? It seems like an arbitrary number and the benefit across tech centers are not well proportioned. To someone who gets 16hrs/disposal, 2 hours is more beneficial than someone who currently gets 30hrs/disposal.

Why not a percent increase of time across the board rather than a set number of hours for everyone?

[jguay]

I should have included "applicant initiated" before "interview takes place" in my last post.

[LeMieux]

"If your goal is to keep potentially damaging arguments, admissions and other statements off the record, there is no better way to prosecute than to use the Interview process as often as possible."

Mooney, you don't make sense. You're such a freaking a$$-wipe. There is nothing that you can do that would be persuasive in an interview that you could "keep off the record." Why? you might ask...

For the very reasons you artlessly articulate below (for all the wrong reasons). E.g., that the applicant is required to include the reasons from the interview in the next response (and even if he wasn't "required" to he would be a fool not to). Further, there is no rule regarding how brief such a written statement needs to be.

"Don't pay attention to the troll, folks. Better to acquaint yourself with 37 CFR 1.113(b): " In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action **must be filed by the applicant**."

Typically those summaries are due within one month of the Interview."

While I applaud the spirit of the above, there is no such thing as a "due date" on applicant's written statement, simply in the next response.

Essentially, you have proven for me what I have told you all along, that there is nothing to worry about with regard to interviews. Anything meaningful that happens winds up in the written record anyway.

Its like someone unscrewed your head, stuck you neck up your a$$ and screwed it back on backwards from the inside. Everything that comes from you is convoluted, twisted and just plain WRONG headed (and foul smelling to boot).

Note to self: NEVER rely on a "legal opinion" generated by Mooney.

I'm with "don't bother;" and, for the record, with regard to Mooney, I won't bother any further.

[LeMieux]

Mooney says ... "it certainly is misleading (and incorrect) to state that "the Examiner is the one who fills out the Interview summary." "

What a freakin' m0r0n. The Examiner is generally the only one to do an Interview Summary.

You really don't know what you're talking about do you...?

Why are you even here?

[curious]

"It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, except where the interview was initiated by the examiner and the examiner indicated on the "Examiner Initiated Interview Summary" form (PTOL-413B) that the examiner will provide a written summary."

[Classification system]

Regarding the classification system....

Speaking for my art, the problem is that the devices are becoming more 'interdisciplinary', for lack of a better word. What was once a device based mostly on physics principles, now might also have a bunch of organic chemistry thrown in (e.g., a CRT vs. an OLED). It's REALLY difficult to examine an application claiming methyl-ethyl-whatever when you're an electrical engineering major and never had to learn what a polymer is. But if the most comprehensive claim is drawn to a device in your class, you can't transfer it. The best you can do is ask for help from people who know such things, but of course, this takes extra time for all parties involved, which is not something readily available at the moment.

I wish I knew how to improve it. Class searches have proven invaluable to me in many cases. I've been looking at the IPC system to see if it's any better, but I'm not convinced.

[anon]

Litigators get ready - - there's about to be a ton of invalid sht flying out the doors of the PTO (that is, more than there is now).