Nudging Against RCE Filings

Following the Sunstein-Thayler nudge theory, the new PTO administration is taking small non-rule-based steps to discourage the filing of Requests for Continued Examination (RCEs). RCE's are already fairly expensive - $810. That outlay is relatively low compared with the cost of preparing and filing an appeal - especially when it appears that an applicant's arguments have not been fully considered or when the applicant perceives the opportunity for an amendment that would lead to allowance.   

Timing: In the past, one benefit of RCEs was that they were quickly examined as part of the theory of compact-prosecution - in essence, RCE filings were treated almost just like an office action response. Under a new procedure, the PTO will now be placing RCE applications in the same queue as divisional and continuation applications. Although that category is identified as "special new," cases are typically taken-up more slowly than ones already on the docket and in-prosecution. According to a memo from Director Kappos, "The change to the docketing of requests for continued examination means that examiners are no longer required to act on a request for continued examination within two months of the entry of the request for continued examination on their docket. This change to the docketing of requests for continued examination is being made to allow examiners greater flexibility in managing their workload and allocating their time among requests for continued examination and new applications." [Note - I'll see if I can pull-up data on the typical delay from filing a continuation until a First Action on the Merits (FAOM)]. [Kappos Memo - rce_docket.pdf]

Examiner Incentives: One of my students - Jaron Brunner - recently wrote an excellent paper applying negotiations theory to the patent prosecution process. Jaron is certainly correct that many aspects of patent prosecution can be thought of as a negotiation process. With that mindframe, it is easier to recognize that - although applicants are the parties that actually file the RCE's - examiners do play a role in taking prosecution to the point of RCE filing. The new examiner count-system addresses this problem by reducing the credit (counts) that examiners receive for examining RCE filings and increasing the credit for initial office actions. As part of the nudge toward focusing on the important issues early-on in prosecution, the PTO is also providing more incentives to examiners to have discussions (interviews) with applicants rather than rely solely on formal paper filings that are often misunderstood and left unread.

Allowing Allowable Claims: Perhaps the biggest nudge is a change in philosophy - dropping the notion that "a lower allowance rate equals higher quality." At least in their speeches, PTO management is encouraging examiners to work more directly with applicants to "find the patentable subject matter and get it clearly expressed in claims that can be allowed."

In both FY2008 and FY2009, applicants filed over 100,000 requests for continued examination.

Comments

[Federally Circuitous]

Given that in most cases, RCE's are filed b/c the examiner did a poor job of examination, putting the RCE in the same queue with everything else in effect penalizes many applicants for having been assigned a less-than-diligent examiner. I suppose if a patent term adjustment under 154 is forthcoming as a result, then it may not matter, but an applicant won't always be due a PTA...

[6]

I had some of those sour skittles today and got a freakin sore on the inside of one of my cheeks!

"As part of the nudge toward focusing on the important issues early-on in prosecution, the PTO is also providing more incentives to examiners to have discussions (interviews) with applicants rather than rely solely on formal paper filings that are often misunderstood and left unread."

There really isn't much of a way to "focus on the important issues" in most cases any earlier than they are currently. Why? You might ask. I'll tell you why:

BECAUSE NOBODY HAS INVENTED THE ISSUE YET!

[Jules]

Applicants might start putting allowable stuff in their *claims* (emphasis added) sooner rather than later, otherwise their RCE's might take a while to get acted on. That time period may not be as predictable as it used to be (although you could roughly base it on whether the examiner is junior vs. experienced, junior will get to it quicker).

There seems to be a positive benefit to applicants who present well thought out amendments during an interview, and solicit advice from the examiner, especially if you're already at the stage of having to file an RCE. Otherwise, again, your RCE might take a while to get acted on.

[Appeal Ho!]

Without a (written only?) commitment from the examiner that proposed claim amendments are/will be accepted, why does anyone even bother with an RCE in the first place; even given the higher cost of an appeal?

[anonymous]

the new docketing status for RCEs may also nudge applicants to contest the finality of office actions more often

[Malcolm Mooney]

Kappos: "This change to the docketing of requests for continued examination is being made to allow examiners greater flexibility in managing their workload and allocating their time among requests for continued examination and new applications."

Seems to me that if the Examiner puts down the case for longer than two months, he/she is going to be that much less efficient when he/she picks it up again.

[Malcolm Mooney]

Ho: "Without a (written only?) commitment from the examiner that proposed claim amendments are/will be accepted, why does anyone even bother with an RCE in the first place, even given the higher cost of an appeal? "

According to that logic, why do anything that doesn't have a guaranteed positive result?

[The aliens]

"Seems to me that if the Examiner puts down the case for longer than two months, he/she is going to be that much less efficient when he/she picks it up again."

We will return irrational Mooney shortly.

Any word on how this will affect patent term adjustment?

It isn't uncommon for me to get 3-4 extra years of patent term when getting an allowance. There is a benefit to stalled patent prosecution.

[Malcolm Mooney]

DC: "Perhaps the biggest nudge is a change in philosophy - dropping the notion that "a lower allowance rate equals higher quality."

This isn't a "notion" or a "philosophy," but a straightforward axiom. The only measure of a patent's quality is: how easy is it to show that the claims were improperly issued? If the PTO issues 100% of all claims presented to it without examining them, the quality of patents will go DOWN. If the PTO examines 50% of all claims presented to it, issuing the remaining 50% without examination, and issuing 25% of the examined claims and rejecting the rest, the quality necessarily goes UP (assuming, of course, that the PTO does a competent examination).

Thus more patents the PTO properly examines and rejects (again, assuming consistent and competent examination), the higher in quality the issued patents become, by necessity.

An increase in the allowance rate at the same time that the filing rate is increasing means that PTO is effing up bigtime. There is no other outcome, absent a massive increase in the quality and quantity of Examiners (including supervisors).

[fisher ames]

Question: If an applicant refiles as a continuation application, instead of going the RCE route, and pays the extra $280, will the Examiner get a full count for a FOAM in the continuation unlike a chopped down RCE count if an RCE had been requested?

[Boss12]

"Question: If an applicant refiles as a continuation application, instead of going the RCE route, and pays the extra $280, will the Examiner get a full count for a FOAM in the continuation unlike a chopped down RCE count if an RCE had been requested?"

Answer: yes.

[still lurking]

Response to fisher ames: why would a client want to refile as a continuation if no claims are allowed in the parent case? There's no benefit in it for the client, either on cost or on time.

[patent leather]

does this mean that RCE's we have recently filed will now take 2 years to get acted on? This sounds like something John Doll would have pulled.

[fisher ames]

Boss12: thank you kindly for the information.

still lurking: it's often better to keep negotiating with the examiner than rushing to an appeal. i also am waiting for the other shoe to drop - appeal fees going up at a noticeably higher rate than other user fees.

[Jules]

"why would a client want to refile as a continuation if no claims are allowed in the parent case?"

To give the examiner more time to work on your case? Presumably that extra time might allow the examiner to do a better job, and it might be a gesture of good will.

[curious]

"At least in their speeches, PTO management is encouraging examiners to work more directly with applicants to "find the patentable subject matter and get it clearly expressed in claims that can be allowed."

How does the new count system reward examiners when they do this???

[curious]

What is the PTO doing to reduce the horrendously long delay in the appeal process?

[curious]

I agree with Malcolm when he says "Seems to me that if the Examiner puts down the case for longer than two months, he/she is going to be that much less efficient when he/she picks it up again."

In fact, given the turnover at the PTO it is not unlikely that a different examiner will pick up the RCE and have to start from scratch.

One step forward and two steps backward, Mr. Kappos?

[Dennis Crouch]

Curious asked: What is the PTO doing to reduce the horrendously long delay in the appeal process?

Although the backlog is growing, in the most recent quarter, the BPAI took less than 8 months (on average) to decide appeals. Although this could be reduced, it is not "horrendously long." See http://www.uspto.gov/ip/boards/bpai/stats/perform/index.jsp

[The aliens]

"The only measure of a patent's quality is: how easy is it to show that the claims were improperly issued?"

We have returned Mooney.

[curious]

Dennis, is the 8 months measured from the time I file my Appeal Brief?

[Dennis Crouch]

Curious asked: is the 8 months measured from the time I file my Appeal Brief?

Answer: No, the 8 months is from the time that the BPAI assigns an appeal number. The appeal number is typically assigned after briefing is complete. Thus, if you count the delay as beginning at the filing of the NOA you will typically be pushing 20 months for the "appeal process." That does seem long.

[A plurality of thresholding units]

MM: "Seems to me that if the Examiner puts down the case for longer than two months, he/she is going to be that much less efficient when he/she picks it up again."

At RCE, we probably haven't really dug into the case for 3 to 6 months already (since the final rejection - except for advisory actions that require more than checking some boxes), so the damage is already done.

[curious]

Thank you for your response, Dennis. You wrote: "Thus, if you count the delay as beginning at the filing of the NOA you will typically be pushing 20 months for the "appeal process." That does seem long."

But this 20 months is after the Applicant has already waited for the FOAM and then prosecuted the case for a couple of years maybe. So four or five years from the filing date to receive the Board's decision may not seem long compared to federal litigation. But it is an eternity for individuals or small businesses who are waiting for patent protection before getting financing or proceeding with commercialization. It is detrimental to our economy, and discourages innovation IMHO. And now we are going to add another year to get an examiner's response to the filing of an RCE?

[The BPAI is a cess pit]

"Although the backlog is growing, in the most recent quarter, the BPAI took less than 8 months (on average) to decide appeals."

The FY09 numbers are in.

The BPAI received 15349 ex parte appeals in FY2009. They disposed of 6757 and the number of pending cases increased from 3897 to 12489.

Given the pace of disposals and the amount of the backlog, that 8 month number should be easily well over 16 months.

FYI - working with a sample size of over 50 appeals, the BPAI has been taking, on average, about 6 months in 2009 from when the Reply Brief is noted (i.e., when the Appeal is ready to docket) to when the Appeal is actually docketed. As such, the numbers are actually much worse than stated.

The BPAI stating that it takes 8 months to decide an appeal is an absolute f'ing joke.

[curious]

Dennis,

Any comments on "The BPAI is a cess pit's" posting above.

It seems more realistic in my experience.

Can you check with the PTO for us?

[Ken Brooks]

Federally Circuitous, you are missing the big picture. Had the practitioner been diligent and done a good job searching the prior art, there would be no need to even worry about an examiner's examination. The claims would be drafted to be in condition for allowance when the application was filed, excepting, of course the 18 months of prior art that no one is aware of but the examiners.

The more interesting point, here, however, is that the Duty of Disclosure is starting to operate as a taking for purposes of the Fifth Amendment. Specifically, the Duty to Disclose ends only upon issuance of the patent. However, often times prior art arises after a Notice of Allowance, .e.g., in foreign counter-part applications. By being forced to file and RCE in order to have the new art considered consumes term. It should be that the Duty of Disclosure ends upon receipt of a Notice of Allowance or we return to 17 years from issuance for a term of a patent. Here, we have the Director allowing the USPTO to take term from an applicant for the benefit of the examining corps. I can think of no clearer example of a taking, espeically when you consider the language of Tafas v. Dudas. Hey wait a minute that case is being pulled. Perhaps you now understand why that ccase was to be pulled. Ever since the term of the patent was changed to priority instead of from issuance, every single dilatory act of the USPTO that slows the issuance of a patent is a taking of a property right for which compensation must be paid. I have long believed this and Tafas v. Dudas supported that belief. Thus, it is no wonder that this directive came out once a deal was reached to withdraw Tafas v. Dudas. There are the backlog of appeals, as well.

[Fed Up Old Guy]

Want to stop too many RCEs, increase allowances and reduce pendency? Do this: get the applicant to claim his invention when he files it (no they don't do it now). Let them file as many claims as it takes broadest to most specific. Then, and here is the kicker, no amendments to the claims. Let the examiner apply art to the point he can and allow the rest. Responses are limited only to claim/art interpretation.
Any takers? Probably not...but I think it would work.
Dennis, you like graphs and charts, ever do one on how many claims get allowed without an amendment?

[curious]

Fed Up Old Guy -- and the examiner is forever stuck with the art he applies and his interpretation of that art in his first Office Action?

[curious]

Fed Up Old Guy writes "Dennis, you like graphs and charts, ever do one on how many claims get allowed without an amendment?"

I would like to see a year-by-year graph over the past 20 or so years of the number of first Office Action allowances.

[Fed Up Old Guy]

Curious
Since the examiner has the invention defined in front of him instead of constantly being redefined by amendment just to over come applied art and he has done the search for the invention....yes, no more searching should be required. But I don't see why interpretations should necessarily be stuck.
The examiner's get a bad rap on this site and yes without doubt there is some crappy examining going around but as the saying goes, it takes two to tango....there are a lot of crappy filed claims out there that cause a lot of these RCEs. It takes all these go amendments to get applicant to finally get down to specifically claiming what they think is the invention...all I am saying it do it up front.

[curious]

Fed Up Old Guy -- so the examiner issues an Office Action on the merits.

The only amendments which the applicant can make are to cancel claims and to rewrite dependent claims in independent format.

And the applicant after filing that Amendment goes directly to appeal, and the PTO can no where during the prosecution change the rejections from what was set forth in the first OA.

The applicant is stuck with his original claims and the PTO is stuck with the rejections in its first OA?

[Zak]

This change is definitely a nudge in the wrong direction.

Considering the long wait to get an application examined, we strive for efficient prosecution at my company. This means that we try very hard to get patents issued in just two office actions. So as Mr. Brooks and others in the past have suggested, it is the general practice at my company to do a prior art search and draft the claims accordingly, focusing on the invention and the market to be protected. Despite our diligence, the FOAMs we receive almost always cite irrelevant art that has been misapplied and ignore the art cited in the IDS.

If possible, we try to work with the Examiner by helping the Examiner understand the invention and its related art with interviews after each office action. For reasons ranging from refusing to return phone calls to just being stubborn, we are not always successful. When we are successful, it is not uncommon for the Examiner to ask us to make an amendment to the claims to address something they are uncomfortable about. In the spirit of cooperation we do this with an RCE. A two month delay is not a big price to pay to stay in the Examiner’s good graces by letting them get an extra count for doing a trivial search that should turn up nothing.

When we are unsuccessful with interviews we appeal. If applicable we start with a Request for a Pre-Appeal Brief Conference and are generally successful in overcoming the rejection. If we do not prevail at the Pre-Appeal Brief Conference or it is inapplicable we proceed with an appeal brief.

Basically, we only file RCEs when the Examiner is being cooperative. The delay resulting from placing RCE applications in the same queue as divisional and continuation applications, however, will nudge use away from filing RCEs when dealing with cooperative Examiners and towards the appeal process. After all, my CEO wants his patents and the sales guys want a protected market; neither wants delays.

[curious]

Zak writess; "The delay resulting from placing RCE applications in the same queue as divisional and continuation applications, however, will nudge use away from filing RCEs when dealing with cooperative Examiners and towards the appeal process."

I will also be filing many more appeals (despite the expense to the Applicants (the public)).

Referring to the posting above, "The BPAI received 15349 ex parte appeals in FY2009. They disposed of 6757 and the number of pending cases increased from 3897 to 12489."

The BPAI will become totally submerged.

[Common sense isn't common]

"The examiner's get a bad rap on this site and yes without doubt there is some crappy examining going around but as the saying goes, it takes two to tango....there are a lot of crappy filed claims out there that cause a lot of these RCEs. It takes all these go amendments to get applicant to finally get down to specifically claiming what they think is the invention...all I am saying it do it up front."

Identifying patentable subject matter involves four things:
1) taking a first stab at the claims
2) construing the language of the claims
3) identifying possible prior art
4) applying the construed claims against the prior art using 102/103

Obtaining perfect claims up front -- which you want requires a claim construction and perfect knowledge of both the prior art and how that prior art will be used -- not the job of the application or the patent attorney.

Applicants are fairly good in identifying 102 art. However, identifying 103 art is another story altogether.

For most claims, there are probably dozens, if not hundreds, of possible combinations that could be made. However, the fact that a combination could be made does not make it obvious.

Without perfect knowledge of the art (and how it will be applied) and how the claims are to be construed, one cannot draft perfect claims.

The goal isn't to draw the line the quickest. The goal is to draw the line that accurately divides what is patentable from what is unpatentable.

[MaxDrei]

Well, having scrolled down that 35 comment thread (all written in just a few hours) I'm left thinking that the key to managing the USPTO workload lies in the 35 USC 112 "written description" requirement. As Common writes, immediately above:

"The goal is to draw the line that accurately divides what is patentable from what is unpatentable"

Agreed. But there's another "game" that comes before that. It is the game 6 mentioned above. When Applicant files, there has to be a "written description" adequate to identify the inventive concept that Applicant thinks he has contributed to the art. With that sort of written description up front, a USPTO Examiner can search the inventive concept properly, once and for all. Once that search report is communicated to Applicant, she can write claims that are good over 102 and 103. Issue should follow, in short order (unless of course the USPTO lacks a means of denying admission to the proceedings of all the "new matter" which US-style claim amendments typically contain).

I should add that a "written description and no new matter" system drives Applicants into writing a decent set of dependent claims, at the outset, by which I mean real fall back positions if claim 1 turns out to be untenable. That set of dependent claims allows Examiners to deliver an even more incisive initial search report. In fact, Mr Kappos, a virtuous circle, if you will.

[the original appealho]

Jules: "why would a client want to refile as a continuation if no claims are allowed in the parent case?" To give the examiner more time to work on your case? Presumably that extra time might allow the examiner to do a better job, and it might be a gesture of good will."

HA! More bribery! Great. You and Boss hog are on the same wavelength.

[confused SCOTUS]

off topic, is the PTO's newly formatteed website incredibly slow, or what?

[Fed Up Old Guy]

Curious - No they don't have to go to appeal they can discuss both of their interpretations of the art and claims and how the art applies thereto. As far as being "stuck"...well they are what applicant claims as his invention right?

Common Sense is not common - Thank you for pointing my point. Lawyers don't claim the invention, they wait until they see the art and then try and claim just a wee bit over it. They don't claim it because they don't know what it is.
This causes many RCEs and long pendency, the examiner is not going to search every possible thing in the spec that could be in the invention and just in the same way that applicant doesn't put everything in the claim that he could. But if they did the examiner could search it all and draw that line in the sand. I also agree that just because a combination could be made that does not make it obvious...but that does not require amendment to the claims just and argument in response.

[Noise above Law]

"With that sort of written description up front, a USPTO Examiner can search the inventive concept properly, once and for all."

But MaxDrei, have you missed the thread(s) wherein 6 maintains that he only has to look at the claim set?

Further, I recognize the difference in diligence between the euro- and US view on amendments, but it is NOT accurate for you to paint that difference as the US allowing "new matter" introduction with amendments. That's simply not correct and reflects more your lack of understanding the US way than it is with such a gross rule violation. Also, you would seem to indicate that new material is routinely added after the initial search which necessitates the secondary or tertiary searches. This just isn't so. RIGHT NOW - the examiners have EVERYTHING they need at the onset to do the complete search - your once and for all IS at hand. New Matter additions are against the Law.

Additionally, at least in my firm, the drafting of claims for fall back position is just as arduously contemplated for US apps as it is for EP apps.

But even before we get to the claims, you seem to miss the point that common sense isn't common is making - the line that accurately divides what is patentable from what is unpatentable is NOT the applicant's job to draw. Applicant's are NOT required to do (and yes I too recommend that they actually do) a pre-filing prior art search. It seems that many want to switch the onus from the examiner to the applicant - people wake up - the Rules package which included such tactics has been rescinded. Contemplate what that means.

One of its meanings aside from the point above, is noted by Dennis above under Allowing Allowable Claims. Especially you examiners like 6 and Malcolm - Lord Kappos has decreed: Reject-reject-reject does not equal quality. You are going to actually have to work and actually examine the material (all of it - not just the claim sets).

Finally, I do believe that "...examiners to work more directly with applicants to "find the patentable subject matter and get it clearly expressed in claims that can be allowed."" - Dennis quoting Lord Kappos) means that examiners, yes examiners, should be helping applicants pull the material that IS an invention from the application and express that material in the claims, as I wrote on a previous thread and was quickly derided by the skirt and track shoe crowd. (before your undies bunch, this does not mean that the applicant is scot-free and doesn't have to present workable claims - let's not misconstrue my position)

Wow - some novel concepts - Examiners examining and working with applicants. Can you be more 180 from reject-reject-reject?

This sea-change will do more to nudge the applicants away from over-broad claims than anything else, but this will not happen quickly. Applicants will have to be convinced that examiners WILL BE helpful before broad over-claiming as a first defense to client rights will abate. AS the vociferous skirt and track shoe examiners posting here evidence, this change in examiner behavior may be awhile in the making.

[MaxDrei]

These last two contributions contain statements that (to my mind) conflict.

Fed Up writes:

"Lawyers don't claim the invention, they wait until they see the art and then try and claim just a wee bit over it. They don't claim it because they don't know what it is."

whereas NAL writes:

"...the examiners have EVERYTHING they need at the onset to do the complete search.."

I'm amused by the idea that the Examiner has the last word, on what's old or obvious. It's that old Presumption of Validity again. For me, what matters is what the Supreme Court will think of my claim, in litigation, long after issue, when the fate of the claim depends on the preponderance of evidence. It's my job to get the claim right. That's what my client pays me for. I expect from the Examiner a competent search, but I don't defer to his/her opinion on what is old or obvious. He or she lacks my access to the skilled addressee. How can an Examiner have a better idea than me, what's old or obvious? The Exr ought to be merely a first stage coarse filter, that refuses clear cases and lets 50/50 cases through.

But, in that case, courts should be finding invalid many of the claims that are litigated, and those who willfully assert 50/50 cases should expect to have to pay dearly, if they lose.

[Jules]

curious: "I would like to see a year-by-year graph over the past 20 or so years of the number of first Office Action allowances."

Why, so you can verify your false assumptions? How about this - more filings = more art = less allowance.

the original appealho: "HA! More bribery! Great."

You know, I was just discussing things honestly, but I thought about it again this morning. It does kind of sound like bribery, but that was not my intent. Now that the issue has been brought out, I would not be suprised if continuation and RCE fees are made equal or otherwise adjusted.

[Lionel Hutz]

Ken Brooks,

(1) You can search for the purposes of novelty, but not nonobviousness. I have had to endure multiple office actions of the Examiner insisting on some tortured logic. A lot of times, it's based upon the use of a particular word or phrase that clearly means something different, but read to encompass all possible meanings is used to reject the claims.

(2) Examiners make crazy rejections.

[Another AnonPatent Atty]

This exact point was raised in the Patent Office Liaison committee meeting. In reply, the USPTO representative suggested that among the possible new steps being considered was the opportunity for the Applicant to pay a fee to have the Application, i.e., the RCE, advanced out of order if the applicant wishes. This can be done simply on the payment of a fee without any other additional requirement,(e.g., of filing a search result with commentary on the prior art, and so on).

This does not seem like a bad or unreasonable idea. At least one other patent office already does this, and the fee is not particularly large.

[Another AnonPatent Atty]

"Without perfect knowledge of the art (and how it will be applied) and how the claims are to be construed, one cannot draft perfect claims."

Gosh. There is an heroic assumption here, for sure.

[MaxDrei]

Another, I'm curious. Which is the "other Patent Office". In the EPO, anybody can ask for expedited examination. It's called "PACE". No fee, no reason needed. But hardly anybody ever does. You know, I think it suits most Applicants to sit for years, with their app published but not yet examined, frightening their competitors with an app that could jump in any one of countless amendment directions.

[Noise above Law]

Maxdrei, "amusement" is only one of many words that the patent bar feels towards examiners re: your comment of "I'm amused by the idea that the Examiner has the last word, on what's old or obvious. It's that old Presumption of Validity again."

Nonetheless, what exactly do you think the job of the examiner is, if not having the last word on what's old or obvious? Can anyone actually get a patent unless the examiner's last word is "OK" (even if that "ok" must be forced by a higher power like the Appeals Board or the courts). Do you find it amusing that examiners must actually examine? Or that part of examining is either allowing or rejecting based on what the last word on what's old or obvious is? I see you are trying to drag the Presumption of Validity into yet another topic - try to remember why that presumption is there. The Office is actually presumed to be doing their job (I know - egads!)

You are correct in noticing the conflict - Fed Up is clearly conflicted about what his job entails, perhaps he didn't quite hear what Lord Kappos has been saying of late. That's OK, all Fed Up has to do is read my posts.

[Noise above Law]

BTW - that was meant to be condenscending.

[Common sense isn't common]

"But if they did the examiner could search it all and draw that line in the sand."

I agree that dependent claims are important in quickly drawing the line. However, I cannot even begin to tell you how many times I've seen dependent claims given short shrift by an Examiner. When I have 20 claims, and I see a single reference 102 rejection or a two reference 103 rejection for all twenty of those claims, I am almost positive that the Examiner has ignored a good portion of the dependent claims.

Some recommendations for Good and QUICK examination:

1) A robust claim set to work with
2) Time for the Examiner to properly consider the specification prior to searching (i.e., don't just keyword search the claims)
3) An EXHAUSTIVE search -- find the best prior art after the 1st OA and Applicant will narrow the claims prior to filing the RCE
4) Giving claims their broadest REASONABLE claim construction -- too many battles are fought over claim interpretation because an examiner has ignored claim limitations under the rubric of giving claims their broadest interpretation
5) An examiner properly trained and supervised -- too many new examiners are left to wallow in the wilderness

[MaxDrei]

NAL writes:

"I see you are trying to drag the Presumption of Validity into yet another topic"

Too right I am. It underlies US thinking about every patent law issue, and so is responsible for the yawning gulf of mutual incomprehension, between the USA and the ROW.

Endless pursuit of the canard, that the claims that emerge from ex parte examination of an app at a PTO are valid unless there is clear and convincing evidence of their invalidity (obviousness) imposes a ridiculous handicap (unique to the USA) on hard-working industry.

But take no notice of me. I know, I might be wrong.

[Yo Quiero Taco Bell]

Common Sense,

Amen! to #4. I recently had an examiner interpret the word "parallel" in the phrase "parallel interconnection bus," in an electrical application, to mean physically parallel so that he could make a rejection. Dear god.

E6k, a tidbit for you. Know how you think you can just cite a general purpose processor then say it's "capable of" performing any software function? I recently won an appeal against an examiner who tried just that. The board slapped him down and said that he must show that the processor of the reference is programmed to do X in order for it to be capable of performing X.

[David Boundy]

I assume that the PTO will be taking the complementary steps required under current law, to implement supervision of examiners to ensure complete examination early in the process, and to prevent premature final rejections. See my comment letter at

http://www.uspto.gov/web/offices/pac/dapp/opla/comments/bpai/boundy.pdf Attachments E and F, PDF pages 67-80.

I have real confidence in the new Kappos administration, that the PTO's past double standard (rules that benefit the agency can be made up an enforced willy-nilly, but laws that benefit applicants can be ignored) is over.

Right?

[Another AnonPatent Atty]

Reply to Max:

The Canadian Patent Office permits a request for examination to be filed by any person, not merely the applicant.

Similarly, once examination has been requested, the CPO permits any person, not merely the applicant, to request that the application be advanced out of order, on payment of a fee of $ 500.

A third party is also entitled, without fee, to submit prior art and to explain the relevance thereof to the Commissioner.

[Erez Gur]

Max,

If you can get the EPO as a search authority during PCT you can usually figure out some of the claims you might get. I think the reason few people use PACE is the cost of validation and then the annuities.

Many Applicants would choose expedited examination in the US if they did not fear the type of office actions that Yo Quiero, Common Sense and Lionel describe.

[Scott E. Kamholz, M.D., Ph.D.]

It seems likely that this new RCE handling procedure is going to result in another patent term adjustment bonanza. Although the clock on 3-year delay stops with the filing of an RCE, PTA will still accumulate under 35 USC 154(b)(1)(A)(ii), which requires the PTO to respond to Applicant's reply under 35 USC 132 within 4 months. An amendment in response to a final rejection that accompanies an RCE would be considered a reply under 35 USC 132, so a 4-month clock will start ticking. Cases often sit on the "special new" docket for years, so there is an enormous opportunity for PTA. It's an even bigger opportunity than when filing a continuation, where the PTO at least gets 14 months from the filing date to issue a first action. A solution might be to docket RCE's as soon as they are filed and then require Examiners to act on RCE amendments within 4 months.

[Another AnonPatent Atty]

"Too right I am. It underlies US thinking about every patent law issue, and so is responsible for the yawning gulf of mutual incomprehension, between the USA and the ROW."

This is an interesting comment that bears some thinking.

How, for example, does the issue of presumption of validity in the US underlie the EPO decision to charge approx. $ 350 per additional claim, even for additional dependent claims? Isn't that, really, an issue of a narrow-minded, democratically unaccountable bureaucracy behaving badly?

How, for example, does it underlie the jaw-dropping difference in cost per potential consumer between obtaining patents in Europe and in the US? (To be fair, Japan and a few others are, notoriously, even worse. India and, to a lesser extent, China are still relative bargains). Surely that issue is primarily one of national sovereignty and language?

Aren't most of the problems at the EPO (which is not ROW), driven by de facto democratic unaccountability?

In any case, it was an interesting comment.

[Michael Valentine Smith]

"Common sense", while I disagree with some of what you said earlier, I completely agree with your post @ 10:06. That is basically what examiners are supposed to do. Unfortunately, way too many were never taught at the beginning how to do it or even that they should. Particularly those hired over the last 5-6 years. And after they are working for 2-3 years it is too late for them to learn to do it right & still meet production. The herd needs to be culled out (e.g., "6").

SPEs generally don't have the needed time to properly train the large number of new hires. The PTA was a failure. Just ask any SPE that got someone from there. Most needed to be retrained and many SPEs didn't or were not able to because they themselves didn't know how to do the job right. For starters, they (PTA) were never allowed to allow anything & didn't know how to identify allowable material or even how to search properly. Once back in the TC they were often not given the training needed & were thrown in to sink or swim. So they did what they had to to survive. The whole set up what wrong & not defending it, just explaining what was.

One thing I DO disagree with is the quality of the claims originally filed. While there are exceptions, for many cases the broadest claims do not pass the "giggle test". For these claims NO person who has the slightest knowledge of the art would actually believe that the claims would be allowable. These are the claims that PO examiners the most. From our POV they seem to be simply there to waste time & are not really what was invented.
Now, I realize that you may have your reasons for filing such ob$cene claims (maybe simply because you have no choice but to obey orders?) but they do nothing to get the case closer to allowance & cause some of the problems with examination & rejections. If the claims were closer to what was invented there would be a better chance of quicker prosecution. Yes, you can not anticipate all the prior art, but being readable on things that have been on the market for decades (no exaggeration) and the common person would know about does not aid prosecution but inhibits it.

MVS

[broje]

Seems to me that this move, combined with the change to the Examiner count system, may be designed to give applicants, in a round about way, a choice of deferred Examination.

Basically, after the Final Office action, the applicant can either file a Continuation application or an RCE. The Continuation application is much less likely than the RCE to be picked up for Examination because of the decreased counts.

So Applicants who just want to keep a patent pending, without having to pay for Office action responses every few months, can file an RCE. Others can file a Continuation application. This decision can be made on a case by case basis by Applicants with the full benefit of having been informed by completion of an entire round of Examination.

This move removes pressure on Examiners to identify allowable subject matter in applications, while saving money for companies at the expense of patent attorneys who would otherwise receive regular fees for preparing and filing Office action responses. Me no like.

[Examanona]

As MM could have guessed, the increased pressure to allow has already begun to decrease quality. Decreasing quality decreases patent value and increases litigation. Costs are therefore shifted from the PTO to the courts.

Here is to higher allowance rates.

Curious will probably return with some examiner bash. So be it. I will have even less work to do.

[6]

"Nonetheless, what exactly do you think the job of the examiner is, if not having the last word on what's old or obvious? "

Unfortunately under our ridiculous system it is merely to have "a say". Then the courts have "the last word".

"Can anyone actually get a patent unless the examiner's last word is "OK" (even if that "ok" must be forced by a higher power like the Appeals Board or the courts)"

Yes.

A sig examiner can refuse till his dying breath and you could still have Kappos give you a patent.

"...the examiners have EVERYTHING they need at the onset to do the complete search.."

HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA
HAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA

Please point me to my art specific library equipped with the books that actually cover my art. There are ~1000 volumes that I require to "do a complete search" over all the cases I've ever done, yet I have around 10 at my immediate disposal and maybe 40 in the downstairs library where they want me to keep the copy in the room.

You want to spring for the other 950+ sometime? They cost about 200-400$ each.

[Common sense isn't common]

"For these claims NO person who has the slightest knowledge of the art would actually believe that the claims would be allowable. These are the claims that PO examiners the most."

Why? These are the claims that are most easily disposed of. Searching for art that doesn't exist (i.e., patentable subject matter) must be much more frustrating than searching for art you know exists.

If I was an examiner, what would get me PO is if all the claims were overly broad. Remember, the goal is to be able to draw the line properly. As such, if some of the claims are overly broad, then go over it.

Some applicants know the art like the back of their hand -- because they spent years in the art. However, many applicants are not aware of the great reaches of the prior art because they solved a problem with something they've never seen before and they want to get a patent on it. At this point, they hand it to the patent attorney. The patent attorney may know some of the art, but in many instances they don't.

Your job, as an examiner, is to know your art -- your very narrow slice of it. There should be nobody else that knows your art as well as you and your fellow examiners in your art unit. The average examiner has spent years and years after years searching their particular art on a daily basis. Nobody outside the USPTO does that -- not attorneys, not professional searchers, not inventors. As such, you have a very skewed belief as to what is known or not known.

The fact that something is on the market does not necessarily make it known to most people in the art. Also, the iventor may be ignorant of the state of the art.

A suggestion to your and all examiners -- get over overly broad claims. Don't take them personally. Overly broad claims will ALWAYS be filed for multitudes of reasons.

BTW -- what I have also seen is that many examiners treat claims as "giggle" claims because they've ignored critical limitations. I've seen it several times where the Examiner has cited art, that generally describes the state of the art for what we've claimed, but is completely silent as to the improvements that we've claimed.

I don't expect Examiners to be even reasonably competent at inventing or drafting claims, and I have no grand illusions about my ability to invennt. Similarly, don't expect applicants and attorneys to know the prior art even a tenth as well as you do. Some may, but most won't. As such, you and other examiners gnashing your teeth over it is just a big waste of your time.

[MaxDrei]

Another lesson learned. I sloppily write how the concept of a "Presumption of Validity" infects every "patent law issue" and am immediately and vigorously assailed with complaints about EPO fees for claim 51 and beyond. It hadn't occurred to me that the EPO fee payable on claim 51 was a "patent law issue". Should I perhaps have written "issues of substantive patent law" or would that not have made any difference?

[6]

"Contemplate what that means."

It means the next rules package will be slightly less ornerous but get the same effect.

Word on a different street than my usual street is that drafting has begun.

ARTI FTW!!!!!!!!!!!!!!!!!!!!!!!!!!

[Jules]

broje: "The Continuation application is much less likely than the RCE to be picked up for Examination because of the decreased counts."

Your logic appears backwards.

"This move removes pressure on Examiners to identify allowable subject matter in applications"

On the contrary, it adds pressure on the examiner to identify allowable subject matter in order to dispose of a case instead of steadily earning fewer counts for each RCE. It also adds pressure on the applicant to claim allowable subject matter in order for the examiner to have any interesting in picking up and disposing of the case.

[MaxDrei]

Common, I think you make my Presumption of Validity point. We expect from the PTO a good quality search. But do we expect an Examiner to know what is or is not obvious to the PHOSITA? I don't.

Is it really true, that those doing searches at the USPTO have been searching that same little corner of the prior art universe, for years and years? These days? Permit me to express my scepticism.

And if that is what they have been doing, exclusively, for years and years, in their little corner, is it that which equips them to pronounce whether something's obvious or not? Seriously?

[6]

"The patent attorney may know some of the art, but in many instances they don't."

The new rules should simply outlaw that nonsense and we'd probably do away with 90% of the ills of the patent system.

[6 FTL]

"Unfortunately under our ridiculous system it is merely to have "a say". Then the courts have "the last word"."

You really think the USPTO, or even worse, an individual examiner, should have the final say? Ridiculous.

I also think it's a travesty that the BAPI can't allow claims. In the EPO, at oral proceedings, if you win, your claims are issued. Simple as that.

[WindyCity]

Fed Up Old Guy - I, for one, like your idea. It merits mention that China is very restrictive on post-Office Action amendments; a strict examiner there may only allow independent claims to be amended to incorporate features from dependent claims. I wouldn't mind a similar process in the USPTO - establish the allegedly novel features in the claims, argue them or combine them if you must, but don't incrementally narrow them over time to overcome Office Action after Office Action.

[don't bother]

"Please point me to my art specific library equipped with the books that actually cover my art. There are ~1000 volumes that I require to 'do a complete search' over all the cases I've ever done"

Don't you ever tire of making stuff up?

Do you think EPO and JPO examiners have, or need, such books? They do a much better search than the USPTO examiners. And they don't incessantly whine like USPTO examiners.

Hopefully Mr. Kappos will start the outsourcing of patent examination sooner rather than later.

[MaxDrei]

6 FTL writes:

"In the EPO, at oral proceedings, if you win, your claims are issued. Simple as that."

which is nice, but does s/he know why? It is because the EPO will only examine that which it has already searched, and will only search that which is in the app as filed. So, searching is over and done with, very early. Historical accident, separation of search and examination but, boy, is it a help, in these days of trying to master the workload. Three cheers for The Law of Unintended Consequences.

[broje]

***********broje: "The Continuation application is much less likely than the RCE to be picked up for Examination because of the decreased counts."

Your logic appears backwards.**********

You're right. I meant "more likely."

***********"This move removes pressure on Examiners to identify allowable subject matter in applications"

On the contrary, it adds pressure on the examiner to identify allowable subject matter in order to dispose of a case instead of steadily earning fewer counts for each RCE. It also adds pressure on the applicant to claim allowable subject matter in order for the examiner to have any interesting in picking up and disposing of the case.**************

I disagree. Most Exmainers are in it for the short term. Those will have to Examine the RCEs created by their predecessors. If they are going to get their counts up, they will need to pick up and give short shrift to as many new apps and Continuations as possible, while pooping out RCEs to be cleaned up by their successors. The lifers will still have a tendency to procrastinate, and use the same or similar strategy in hopes of getting promoted to the point where those lower on the totem pole will be cleaning up their RCE messes.

Psychological tests have repeatedly demonstrated that only fear of immediate consequences is effective in deterring behavior. Permitting Examiners to put off cleaning up their own RCE messes only increases the frequency of the behavior. What we really need is a decrease in counts for any Final if an RCE is filed. That would get Examiners off their bums.

[sarah mcpherson]

answer to posted by 6 at 11:40.
As I am sure you all believe I don't know anything.. But I do know a system of Art in catagories and sub catagories and sub sub catagories.. similar to ebay can be with a little work posted on each computer. The work the PTO needs to invest in. And then you will have most of the art neccessary to validate/invalidate most claims right in front of you... 6. If the PTO can hire Examiners by the 100's They can hire techies too write the programs to do this. And keep the programmers. and pay them well to constantly add what is new and useful to the Art people claim. And then the only thing missing will be an Examiner that can do his job "correctly" with his SPE there to make sure.
Sarah McPherson

[Mark]

"As part of the nudge toward focusing on the important issues early-on in prosecution, the PTO is also providing more incentives to examiners to have discussions (interviews) with applicants rather than rely solely on formal paper filings that are often misunderstood and left unread."

Although examiner interviews may have some value in figuring out an examiners point of view on an issue and using it to craft an appropriate written response, applicants and their legal representatives should take care to note that any oral promises from an examiner are not to be relied upon (i.e. not to be trusted):

37 CFR § 1.2 Business to be transacted in writing.

All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

[curious]

"Permitting Examiners to put off cleaning up their own RCE messes only increases the frequency of the behavior."

Of the PTO delays long enough the Applicant may lose interest for business or financial reasons, the case goes abandoned and the PTO is happy

[Examanona]

Broje, I am not sure I understand your need to punish people. What ever happened to incentives? I assume that you receive a reward for quality work and are in some way punished by poor work.

Punishment leads to avoidance of punishment. You agree with this by stating, "You're right. I meant "more likely.""

Where do you find the basis for "Most Examiners are in it for the short term?"

[6 FTL]

"The new rules should simply outlaw that nonsense and we'd probably do away with 90% of the ills of the patent system."

So let me get this straight. Examiners, who examine a very specific area of applications, aren't expected to know the art. But attorneys, who deal with many many technology areas, are expected to know all the art in each area?

As you would say... LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

[an examiner]

"...the examiners have EVERYTHING they need at the onset to do the complete search.."

I'd definately disagree with this. Prior to becoming an examiner I worked in industry for about 4 years in my specific field.

There is much more knowledge availible then what is reflected in the patent art (foreign and domestic). First with NPL being from industry I know a lot of locations to look beyond google, plus I have a large library of my own books which is indespensible. To keep current on NPL and have access to the best NPL, quickly, I pay about $180 a year for my professional membership (otherwise I have to wait till the patent office gets it for me), plus I spend another ~150 a year of my own money expanding my personal library. I could spend 1000's a year and still not have everything that is theoretically availble to the PHOSITA.

Beyond NPL there are times where equipment features are claimed that I've dealt with before in industry but were never something made explictely public (detailed equip drawings, rules of thumb, industry best practices).

Finally as an examiner you're restricted from talking to the top experts both in industry and the universities because of confidentiality rules.

[Noise above Law]

Thanks Mark,

Be sure to ask 6 what that law means. You'll love his answer (if he ever grows a pair and mans up to one).

[Malcolm Mooney]

"As MM could have guessed, the increased pressure to allow has already begun to decrease quality. Decreasing quality decreases patent value and increases litigation. Costs are therefore shifted from the PTO to the courts."

And the presumption of validity will become increasingly meaningless as the public (e.g., judges) are confronted with more and more garbage.

The trolls should be careful about what they wish for. Then again, many of them are just gambling addicts playing with other people's money.

[Night Writer Patent Attorney]

sarah mcpherson I think you are basically right. The way to increase quality is to learn to assist the examiners better. It is not reasonable to expect the examiners to know and become experts in so many areas.

[Tazistanjen@gmail.com]

We'll see how it develops, but what I am hearing from Kappos et al. appears to be very good news for me and my clients. I am more optimistic than I have been for a very long time. Better upfront examination is what I would wish for the most. And I really like the encouragement for the Examiners to work with the attorneys to identify allowable claims. As Common says above, the Examiners usually know the prior art best, and the attorney knows the invention best. Bringing this knowledge together seems like a quick and effective way to do a good examination.

Actually, I have been having more productive discussions with Examiners already in the last couple of months. Maybe it is just coincidence. Are other people noticing this?

[If I was 6]

If I was 6, I would at some point realize how freakin stoopid I was and STFU and try to actually learn something.

But I'm not, thank god.

[LeMieux]

"...many of them age gambling addicts..."

Like Mooney is a patent blog junkie gambling with other people's time and patience

[6 FTL]

"Actually, I have been having more productive discussions with Examiners already in the last couple of months. Maybe it is just coincidence. Are other people noticing this?"

I've noticed some examiners actually wanting to work with me to get the case allowed, as opposed to simply wanting me to go away as in the past.

I've also had quite a few first action allowances of late. Eight applications I wrote last year have come back allowed on the first action. I can't decide if that means I did something right or something wrong...

[Ha ha ha]

Examona:

There are Examiners we're talking about!

If they do their job correctly, they should be punished a little (decreased punishment is their reward!).

If they do their job incorrectly, they should be punished a lot (perhaps have to pay the notice of appeal fee from their pay check in the event the pre-appeal brief conference reopens prosecution, for example).

Don't like that? Well, that should make you think the clients don't like it either. Funny how Examiners would be much more careful if it was their money on the line, instead of the applicant's!

[LeMieux]

The idea that there has to be some kind of touchy-feely "nudge" involving interviews before the first action and the like is just a bunch of gobbledy-gook.

Why not just make Examiners do their freakin job and do a good initial search and first action, instead of doing like 6 does, and copy and paste the claims into the search engine (raw hindsight reconstruction) and take the top 3 references even if they are in a completely unrelated area (bearing "collar" from a mechanical claim brings up a reference in the shirt arts and the examiner uses it).

Although, aside from 6, I think even the dumbest examiners out there knows that atoms don't fall out of wires.

6 - constantly setting new lows.

[Posiing as Kappos]

We have a new policy 6, do your freakin job or you are going to get a "nudge" out into the street.

[Ha ha ha]

"There" should be "These." Carry on.

[LeMieux]

"And the presumption of validity will become increasingly meaningless..."

The presumption that Mooney has anything meaningful to say is about zero, but that doesn't stop him from droning on and on and on...

The presumption "valid until proven otherwise" will stand, "innocent until proven guilty" will stand; "Mooney is angry little idi0t until he proves otherwise" will stand

[FedUp]

Incidentally, Sunstein can "nudge" his elitist theories right up his a$$ - most people don't need to be nudged, particularly not from some liberal academic from an elitist grade inflation factory like Harvard.

Just let people be free to be as smart (or as stoopid) as they want to be and then enforce consequences.

[Examanona]

Ha Ha Ha,

I am sure that you never write claims that are so overly broad that a table would be 102(b) over it. I am sure that when an Examiner rejects those broad claims using a table, it is that the Examiner was making a bad rejection. The Examiner should have known that the Applicant really meant that the invention was directed toward the electro-hydraulic lifting device in the fourth embodiment.

Therefore, the Examiner should have paid your fees also in drafting claims to the true invention.

Not every attorney is as perfect as you.

Not every examiner is as bad as you think either. Instead of being an us vs them attitude, I believe working together is better. You like Kappos because he wants he is more attorney friendly. Great and fine. Just don't be surprised that the gift you keep asking for stinks.

[curious]

"Instead of being an us vs them attitude, I believe working together is better."

I fully agree and that is the way it was until about six years ago, when the reject-reject-reject policy was enacted and the examiners had less incentive to work with applicants to get a case allowed. They were punished for erroneously allowing a case but suffered little punishment for erroneously rejecting a case.

[Ha ha ha]

Curious got it right. Examananoa, you want to know what happened to my spirit of cooperation? The last five years prosecuting before the group of buffoons known as Examiners crushed it into the ground. Reap what you sow, and all that.

I'll be generous - I'll be twice as cooperative as the PTO was during the last five years. Which means, now that the pendulum has swung the other way, and the golden age of prosecution has begun, don't expect us to cut any slack.

Attorney kings begin their rule over the Examiner serfs.

[LeMieux]

"A patent shall issue unless..."

Pretty much says it all and should guide how the office works. Most idi0ts and those new to the profession just can't grasp the simple concept.

But there it is in all its simple splendor

A - patent - SHALL - issue - unless - it is anticipated or obvious. Period.

There is not law that says, a patent might issue if the Examiner feels like it, or if the political atmosphere is convenient, or if the tea leaves fall a certain way.

Repeat after me: "A - patent - ***SHALL ISSUE*** - unless - it is anticipated or obvious.

Period.

[Ha ha ha]

Right - no matter what the taught you in Hamburger U, I mean Patent Academy, applicants need not convince you claims are patentable.

[FED UP OLD GUY]

Thanks for the thumbs up Windy City

Forthe record someone is posting as FED UP...not be be confused with me

[ap]

Examanona, ha ha ha is correct, but I think payment by all appeal conferees should be made when reopening happens AFTER THEY DECIDED THE CASE SHOULD PROCEED TO APPEAL AND AFTER YOU FILE A BRIEF. This has happened to me three times, and in each case, no new arguments were presented in the brief, which were not presented in the request for the pre-appeal brief conference.

Frankly, I think each of these three individuals (which includes the examiner) should be fined about $1000.00 for incompetence, for carelessly extending prosecution, and for being a major jerk.

[Examanona]

The pendulum swings back. I will allow everything that comes across my desk.

Who won't be happy?

Attorneys would never file a patent application that was without merit.

I am all for this. My production will be 200%. I will receive awards.

[Malcolm Mooney]

curious: "I fully agree and that is the way it was until about six years ago, when the reject-reject-reject policy was enacted and the examiners had less incentive to work with applicants to get a case allowed."

I never noticed this change. Examiner were always willing to schedule an Interview and discuss the case.

Must be something to do with certain art units. And I'm sure it has nothing at all to do with the sort of claims being pursued in those art units.

[broje]

"Where do you find the basis for 'Most Examiners are in it for the short term?'"

The attrition rate. Peple generally say that about 50% of Examiners leave within 2 years of being hired. I don't know if that's true, but I certainly hear it a lot. I've seen figures that suggest that the overall attrition rate is around 35%. So, of those that aren't planning to leave, I think that there is a high lilihood that those Examiners either already have the seniority to assign work or are jockeying for that seniority.