Newly minted patent examiners play the role of "assistant examiners" at the US patent office. The work of assistant examiners is reviewed by primary examiners, and both are reviewed by supervisory patent examiners as well as quality control specialists.
Of the roughly 160,000 utility patents issued in the past year (June 29,2008 – June 29, 2009), about 37% were examined by an assistant examiner with the remaining 63% handled by primary examiners working alone. This proportion varies according to Technology Center.
Technology Center |
Patents Issued |
Percent Handled by |
|
1600 |
Biotechnology and Organic Chemistry |
11,667 |
38% |
1700 |
Chemical and Materials Engineering |
16,857 |
28% |
2100 |
Computer Architecture, Software, and Information Security |
16,217 |
47% |
2400 |
Networking, Mulitplexing, Cable, and Security |
3,370 |
55% |
2600 |
Communications |
23,758 |
42% |
2800 |
Semiconductors, Electrical and Optical Systems and Components |
50,812 |
36% |
3600 |
Transportation, Construction, Electronic Commerce, Agriculture, |
18,098 |
34% |
3700 |
Mechanical Engineering, Manufacturing, Products |
18,018 |
30% |
4100 |
Training Academy |
372 |
98% |
For applicants who appreciate delay, patents that were handled by assistant examiners are more likely to be eligible for patent term adjustment due to patent office delay. (This results hold true for each technology center). 80% of patents handled by assistant examiners were awarded some PTA while only 72% of those handled solely by a primary examiner. This translates to an expected PTA of 12 months versus 9 months respectively.
Only applications filed after May 29, 2000 are eligible for a patent term adjustment. More than 99.5% of patents issued thus far in 2009 have a PTA qualifying filing date. Over the past four years, the percent of patents with some patent term adjustment has been steadily rising over time.
Notes:
"The patent term adjustment (PTA) provisions of the American Inventors Protection Act of 1999 (AIPA) allow for term adjustment: (1) if the USPTO fails to initially act on an application within fourteen months of its filing date; (2) if the USPTO fails to respond to a reply or appeal by applicant within four months of the reply or appeal; (3) if the USPTO fails to act on an application within four months of a Board of Patent Appeals and Interferences (BPAI) or court decision in an application containing allowable claims; (4) if the USPTO fails to issue a patent within four months of the date the issue fee was paid; (5) if the USPTO fails to issue a patent within three years of its filing date; (6) if issue of a patent was delayed due to imposition of a secrecy order; (7) if issue of a patent was delayed due to an interference proceeding; or (8) if the issue of a patent was delayed due to successful appellate review. This PTA smorgasbord requires the USPTO and applicants to monitor numerous events during the prosecution of the application to determine the appropriate term adjustment, and often results in applicants obtaining patent term adjustment despite the fact that the patent has an unadjusted term of longer than seventeen years from grant.
The purpose of the patent term adjustment provision in the AIPA was to guarantee that diligent applicants would still have a patent term of at least seventeen years from grant under the twenty-year patent term system. If the USPTO issues the application within three years from its filing date, any patent term adjustment operates to overcompensate the patentee. PTA should be limited to the situations in which the USPTO delayed processing or examination of the patent and this delay resulted in the application pending before the USPTO for more than three years." Via USPTO
“there must be thousands of people who know of me around the country.”
You are the poster child for examiners … you confirm what many practitioners believe is the mentality is at the USPTO.
BTW — I bet your popularity is comparable to that of Mahmoud Ahmadinejad. Alternatively hated or loved when amongst your own. As for outside your own, well … let’s not go there.
“Um, I’m pretty sure “objectively incorrect legal advice” is closer to “banned for idiocy” than “hurting his business model”. I know your little God-complex gets in the way of your reading comprehension, so just trust me on this.”
I thought so too until I read the response he emailed me. He wants me to leave him be and stop hurting his biz though and since I bear him no ill will I will.
Think Noise, do you think he doesn’t want me telling ind. inventors not to use a lawyer out of some altruistic duty he has taken upon himself? No, he doesn’t want me laying the case out for him being wrong on half the issues he posts about and making him look bad.
Also, Gene tells me that I’m famoose, and he knows at least 20 people who know of me pretty well irl. Just think, if he knows 20 people irl, there must be thousands of people who know of me around the country.
6: “I was banned for hurting his business model. Or at least that’s what he himself claims.”
Gene: “I actually banned him/her from commenting here because when I would post information aimed at independent inventors and entrepreneurs he would comment with what was objectively incorrect legal advice and then claim his/her superior status as a patent examiner made him more qualified.” link to ipwatchdog.com (Comment 24)
Um, I’m pretty sure “objectively incorrect legal advice” is closer to “banned for idiocy” than “hurting his business model”. I know your little God-complex gets in the way of your reading comprehension, so just trust me on this.
Noise I was banned for hurting his business model. Or at least that’s what he himself claims.
See, for example over at hawk where something posted didn’t go over well with a potential client and the potential client decided that he didn’t like hawk.
I guess the same thing happened to Gene, except over something I posted.
link to patenthawk.com
link to patenthawk.com
“Oh, and that is a rule that Read has thrown at you, with pretty clear “must” language, not an MPEP guideline,”
Noise I don’t see how you missed that, but the rule clearly states that one must only explain things which aren’t on their face apparent. Everything, in nearly 99.9% of rejections could be characterized thus. As such, that “rule” lacks any teeth.
“If you haven’t figured it out by now, Boss12 is 6.”
I totally thought it was myself for a little while as well. But it isn’t me. One major difference is that I try to give even the badly written apps a decent action. In fact, this eats up more time than anything in writting an OA can because you have to second guess yourself about what it was they really did mean, or if they meant anything at all.
I have to admit, boss 12 makes a pretty convincing argument as to why I should not though. It shouldn’t be up to me to turn your app into gold through examination.
…and of course, we can wander over to IPWatchdog and see Boss12 try to post – oh wait, the “wrongful banation” would prevent that, wouldn’t it? How droll – banned for his idiocy. Don’t worry 6/12, you are always welcome here at trainwreck central.
Read,
If you haven’t figured it out by now, Boss12 is 6.
Sorry to out you 6, but the snarky tone, lack of reading COMPREHENSION, and lack of legal logic are dead give-aways. Besides, “Boss”, we all know that real Office Bosses don’t examine applications, mush less examine them in such flippant disregard of the actual law and rules (well, I guess if they did examine, they might show the same disregard…).
Oh, and that is a rule that Read has thrown at you, with pretty clear “must” language, not an MPEP guideline, so we can revisit obeying rules again if you wish to continue to highlight your persistent ignorance.
“However, it would be my guess that I have ENORMOUS flexibility in that regard.”
37 CFR 1.104(c) —
“In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.”
Compare to — “I provide enigmatic and abbreviated explanations of how the claims read on the cited prior art”
BTW — so unless the Examiner is doing a non-complex interference, this rule applies.
“JPO and EPO examiners examiner their fair share of “literally translated” applications and manage to do a much better job than US examiners.”
Give me a break. JPO Office Actions blow.
“Imagine that you are a patent examiner, and you have just begun reading a patent application that was:
– assigned to a Japanese corporation;
– automatically ‘machine-translated’ from Japanese into English;
– submitted to the USPTO by a member of the Patent Bar; and
– unedited, because the Japanese client told the US attorney to file the application ‘as is.’
Now, as the patent examiner, when writing the Office Action, would you clearly and thoroughly explain how the claims read on the cited prior art in the 102/103 rejections?”
JPO and EPO examiners examiner their fair share of “literally translated” applications and manage to do a much better job than US examiners. They are simply more professional than US examiners.
But everybody already knew that.
Broje, there isn’t enough information given. How much does the CEO of company B fear for his own, and his family’s head’s proximity to each of their respective bodies? Is the CEO of company A 6?
“appealho” stated:
“Hey Jules and Jim and Boss12
If we submitted perfect applications, WTF would we need you for?”
To examine the applications, and, if the applications are in condition for allowance, to write the Notices of Allowance.
broje “Company A files y patents. Company B files 13y patents. 1/2 of Company A’s patents issue. 1/5 of Company B’s patents issue. How screwed is Company A?”
In the world of grown-ups, it depends on the scope and strength of the claims, which depends on the quality of the data supporting the claimed technology.
In the world of trolls and patent wankers, of course Company B wins because all that matters is the size of the portfolio and “everything is enabled.”
“MaxDrei” states:
“Stop and think for a minute what the job of examining rubbish must be like, and what you would in the end find yourself doing, were you to be doing Boss12’s job. Those who take the trouble to file quality applications are entitled to a full measure of Examiner attention. Goes without saying. Those who file rubbish should receive from the PTO in proportion to what they gave it.”
Exactly.
Imagine that you are a patent examiner, and you have just begun reading a patent application that was:
– assigned to a Japanese corporation;
– automatically “machine-translated” from Japanese into English;
– submitted to the USPTO by a member of the Patent Bar; and
– unedited, because the Japanese client told the US attorney to file the application “as is.”
Now, as the patent examiner, when writing the Office Action, would you clearly and thoroughly explain how the claims read on the cited prior art in the 102/103 rejections?
I think some of you involved in this discussion have not realized that, when it comes to determining whether claims are patentable, I give both “solid” applications and “crappy” applications the same scrutiny.
Note that I previously stated:
“When I examine a patent application, regardless of whether the patent application is “crappy” or “solid,” I always:
– study the Specification and Drawings, so that I completely understand the disclosed invention and so that I can formulate a search strategy to find the best prior art;
– properly interpret the claims in light of the disclosure, so that I completely understand the claimed invention;
– find the best prior art; and
– base my 102/103 rejections on the best prior art.”
The DIFFERENCE is in the explanations I provide in the written rejections of Office Actions.
Note that I previously stated:
“- When I write the 102/103 rejections for a “solid” application, I provide clear and thorough explanations of how the claims read on the cited prior art (because the patent application is written clearly and thoroughly).
– When I write the 102/103 rejections for a “crappy” application, I provide enigmatic and abbreviated explanations of how the claims read on the cited prior art (because the patent application is written in an enigmatic and abbreviated manner).”
Some of you have spun what I wrote into: I “fully” examine “solid” rejections and I give “crappy” rejections an “abbreviated” examination.
That’s not what I wrote, and that’s simply not true.
Now, I’m not sure what the US Constitution says about patent examiners providing explanations of how the recited claims read on the cited prior art in Office Actions. However, it would be my guess that I have ENORMOUS flexibility in that regard.
“curious” states:
“If the application is written so that it does not comply with one of the statutory sections and cannot be amended so that it does, then the Applicant does not get his patent. The Applicant is thereby punished.
It is the Applicant’s choice.”
I won’t argue with that. I fully concur.
“I wonder” states:
“What Boss12 describes is exactly the type of thing that we, in the United States, criticize “lesser” countries for — selective treatment, meted out by beareaucrats, of it’s citizen’s rights based upon some subjective measures.”
To exactly what “constitutional RIGHT” are you referring?
Are you stating that the US Constitution grants citizens a RIGHT to a patent?
“I wonder” states:
“The actions undertaken by Boss12, IMHO, is a violation of the Fifth Amendment to the US Constitution.”
Please explain your statement. Particularly, specifically explain WHICH ACTIONS violate the Fifth Amendment to the Constitution and explain in detail HOW those actions are unconsitutional.
If any of you other “attorneys” out there can explain this statement, then please do so.
(I fully expect to only hear crickets chirping in response to my request.)
curious:
“If the application is written so that it does not comply with one of the statutory sections and cannot be amended so that it does, then the Applicant does not get his patent. The Applicant is thereby punished.
It is the Applicant’s choice.”
You’ll get no argument from me on that point.
“As I previously stated, I examine many patent applications in the computer software art where the Applicant (and the Applicant’s attorney/agent) has exerted minimal time and effort to perfom the above-listed actions.”
And you know this, how? Is there anything more hilarious than an examiner who has never written a patent application in their life commenting on the quality of a patent application?
“Because I will thoroughly enjoy crushing you at the Board . . .”
LOL
I love the examiners who boldly proclaim in interviews, and elsewhere, “Go ahead and appeal, I’ve never lost.”
Right. Because you re-open every time.
Please post some serial numbers of your “crushing” examiner’s answers so that we can all marvel at your mighty prowess.
ROFLMAO
Noise: I stand corrected
(which, coincidentally, is what the man in orthopaedic shoes said to Alan Partridge)
MaxDrei,
“…the vehemence…is in direct proportion to the trouble you have to come up with any argument against what I write”
No, the vehemence comes easy with the crap that you post without care or regard to what you are actually saying. Arguments against crap are easy. Arguments against well-thought intelligent postings are challenging and thus more rewarding. Try to T_H_I_N_K.
You are self deluding if you “think” that what you post is legally challenging or causes me any trouble except for my dealing with avoiding stepping in the excrement of your posts.
I wonder,
you state “It is a sad state of affairs at the USPTO when federal employees, who have taken an oath to uphold the laws of the United States of America, willingly flaunt them.”
I would think that the posts from 6 must put you on suicide watch.
“BTW, one difference between a professional and a grunt employee is that a professional will provide a high level of service regardless of the professional’s opinion of the person to which the service is being provided.”
Excellent. I could not agree more.
BTW, one difference between a professional and a grunt employee is that a professional will provide a high level of service regardless of the professional’s opinion of the person to which the service is being provided. A grunt, on the other hand, does just enough to get by and will let his personal feelings cloud his judgment.
Perhaps one of the first thing the new Commissioner should do is to require each of the employees at the USPTO take a course of professionalism.
“You get what you give… there’s a principle for you.”
You’ll sing a different tune if …
… the next time you walk into the DMV, they refuse to renew your driver’s license because the way you look.
or
… the next time you get pulled over for speeding 5 mph over the limit, the cop doesn’t like the car you drive and decides he is going to jail you for 7 days.
Your principle only works for those who decide what you get and are ripe for abuse.
It is a sad state of affairs at the USPTO when federal employees, who have taken an oath to uphold the laws of the United States of America, willingly flaunt them.
Please don’t lump me with everyone else based on one statement. I did not say you must submit a perfect app. I know everyone has different capabilities. You are perfectly entitled to submit low quality applications.
Hey Jules and Jim and Boss12
If we submitted perfect applications, WTF would we need you for?
Noise, again, thanks for the compliment. I try to keep readers entertained. Your comment would suggest that, at least in your case, I’m succeeding.
I put it to you that the vehemence with which you assert that my “logic” is flawed is in direct proportion to the trouble you have to come up with any argument against what I write. Hilarious, don’t you think?
You get what you give… there’s a principle for you.
“Stop and think for a minute”
…Coming from MaxDrei:
Hilarious.
You know, I Wonder, your:
“What Boss12 describes is exactly the type of thing that we, in the United States, criticize “lesser” countries for — selective treatment, meted out by beareaucrats, of it’s citizen’s rights based upon some subjective measures.
Boss12 should be ashamed to be a US citizen.”
is a worthy impulse, but you’re panicking unnecessarily. Was it the CAFC or was it SCOTUS, that cautioned Applicants to “Be careful what you ask for”? And isn’t there some saying or other from those who use computers, something about if you feed rubbish in then it’s inevitable that only rubbish will come out. Stop and think for a minute what the job of examining rubbish must be like, and what you would in the end find yourself doing, were you to be doing Boss12’s job. Those who take the trouble to file quality applications are entitled to a full measure of Examiner attention. Goes without saying. Those who file rubbish should receive from the PTO in proportion to what they gave it.
If you can write instead “it is” then it’s “it’s”. Otherwise it’s “its”. OK?
Boss12 seems to me like a worthy American, trying to do his level best to serve the Great American Public in a difficult and demanding job. Probably doing a great deal more to serve his/her country than you, I shouldn’t wonder.
Readers, this thread shows once again the attitude that makes US patent law so special: the idea that, if I can only force rubbish past the PTO then I’ve got a monopoly right that will repel most every challenge to validity. Other countries factor into their patent law an appreciation that validity can only be tested seriously and fairly in inter partes proceedings, when the attacker can don the mantle of the PHOSITA just as convincingly as the patent owner. No wonder there is so much acrimony between Applicant and PTO Examiner, only in the USA.
But then of course, if post-issue, it’s a jury that will decide on the validity of a high tech claim, I can well understand the reluctance to switch to a preponderance standard for, that way, chaos ensues.
Only sayin’.
“Bottom line: Submit a ‘solid’ application, and I will work with you to get the claims in condition for allowance. Otherwise . . .”
I sometimes wonder if most examiner’s realize that they are government employees and are subject to the multitude of various law/rules governing their actions.
I also wonder if the term “due process” means anything to most examiners.
The actions undertaken by Boss12, IMHO, is a violation of the Fifth Amendment to the US Constitution. He should be glad he is anonymous.
One of the classes I enjoyed most in law school was constitutional law. Although I knew I would never practice in the area, I gained a much greater appreciation for our system of laws and all the protections provided to the average citizen by that system.
What Boss12 describes is exactly the type of thing that we, in the United States, criticize “lesser” countries for — selective treatment, meted out by beareaucrats, of it’s citizen’s rights based upon some subjective measures.
Boss12 should be ashamed to be a US citizen.
Company A and Company B are in competition. Company A and Company B each have x amount of money to spend on seeking patent protection.
Company A files y patents. Company B files 13y patents. 1/2 of Company A’s patents issue. 1/5 of Company B’s patents issue. How screwed is Company A?
If the application is written so that it does not comply with one of the statutory sections and cannot be amended so that it does, then the Applicant does not get his patent. The Applicant is thereby punished.
It is the Applicant’s choice.
I would like for the Patent Bar to publish a memo commenting on why some patent applications are poorly-written and some patent applications are well-written (i.e., two tiers of quality).
The Applicant is in complete control of whether the patent application is poorly-written or well-written. It’s your choice curious . . .
I would like for PTO management to publish a memo commenting on this two tier treatment of patent applications which Boss12 and many other examiners provide applicants.
curious — I restate: as a member of the Patent Bar, it is your job to rewrite a “crappy” patent application into a “solid” (i.e., well-written) patent application. Your client has paid for this, and this is the job that you are getting paid for.
If the attorney/agent submits a “solid” application, then I will work with the attorney/agent to get the claims in condition for allowance as quickly as possible.
If the attorney/agent submits a “crappy” application, then I assume that the attorney/agent is not seriously pursuing a patent.
When I examine a patent application, regardless of whether the patent application is “crappy” or “solid,” I always:
– study the Specification and Drawings, so that I completely understand the disclosed invention and so that I can formulate a search strategy to find the best prior art;
– properly interpret the claims in light of the disclosure, so that I completely understand the claimed invention;
– find the best prior art; and
– base my 102/103 rejections on the best prior art.
Here’s the difference between Office Actions for “solid” (i.e., well-written) applications and “crappy” (i.e., poorly-written) applications:
– When I write the 102/103 rejections for a “solid” application, I provide clear and thorough explanations of how the claims read on the cited prior art (because the patent application is written clearly and thoroughly).
– When I write the 102/103 rejections for a “crappy” application, I provide enigmatic and abbreviated explanations of how the claims read on the cited prior art (because the patent application is written in an enigmatic and abbreviated manner).
As you can imagine, the attorney/agent for the “crappy” application often fails to recognize the relevance of the cited prior art with respect to the recited claims, since the attorney/agent (I assume) does not exert the time and effort to read and fully understand the entirety of the disclosed subject matter in the cited prior art.
Bottom line: Submit a “solid” application, and I will work with you to get the claims in condition for allowance. Otherwise . . .
“6, are you saying that when applicant pays his filing fees he is not entitled to a solid examination and solid office action(s) because part of the PTO budget comes from maintenance fees (which are paid by former applicants).”
I’m not saying he is or isn’t. He may be, but no authority I know of has declared it to be so, so it is premature to state such a thing. Perhaps someone knows of such a statement from an authority?
The authorities that I’m aware of that have loosely touched upon the subject, in joking manner perhaps it might be said, have stated a comparison for us wherein we make chryslers as opposed to chevys or some such comparison analogous to cars that implies we always make less than quality products and that is what is expected of us.
6, are you saying that when applicant pays his filing fees he is not entitled to a solid examination and solid office action(s) because part of the PTO budget comes from maintenance fees (which are paid by former applicants).
Thanks for the assist noise, I need you to be more vigilant though. Too many people coming in feeling “entitled” etc. for one man to handle.
“Applicant has paid for this. ”
I restate for 12: Applicant has paid for 1/4 of this. Anything extra they get is gravy being given to them by patentees.
“The PTO is not doing its job of providing Applicants with timely appeals which especially can be important for products with short commercial lives.”
Perhaps they should bump me up to the Board.
Boss12 — I restate: no matter how “crappy” you may think that the application in front of you is, it is entitled to a solid examination and solid office action(s). Applicant has paid for this. And this is the job which you are getting paid for.
If the application does not comply with any of the statutory sections which you have quoted then reject it.
As far as appealing to the BPAI goes, see link to patentlyo.com .
The PTO is not doing its job of providing Applicants with timely appeals which especially can be important for products with short commercial lives.
To “curious:”
You state: “Second, no matter how “crappy” you may think the application is, it is entitled to a solid examination and solid office action(s).
That is your job.”
As a member of the Patent Bar who submits a patent application at the USPTO, it is YOUR job to:
– write the Specification so that it describes the invention using “FULL, CLEAR, CONCISE and EXACT terms” (35 USC 112, 1st paragraph);
– write claims “PARTICULARLY pointing out and DISTINCTLY claiming” the invention (35 USC 112, 2nd paragraph);
– write claims so that the claims “DIFFER SUBSTANTIALLY from each other” (37 CFR 1.75(b));
– write claims that “conform to the invention AS SET FORTH IN . . . THE SPECIFICATION” (37 CFR 1.75(d)(1));
– write claims using terms that “find CLEAR SUPPORT or ANTECEDENT BASIS in the description so that the MEANING of the terms in the claims may be ASCERTAINABLE by reference to the description” (37 CFR 1.75(d)(1));
– write claims that recite statutory subject matter (35 USC 101);
– write claims that recite novel subject matter (35 USC 102); and
– write claims that recite non-obvious subject matter (35 USC 103).
As I previously stated, I examine many patent applications in the computer software art where the Applicant (and the Applicant’s attorney/agent) has exerted minimal time and effort to perfom the above-listed actions.
Free advice to all patent attorneys/agents: after your claims have been twice rejected, if you believe your claims distinguish your invention from the prior art that I’ve cited in my last Office Action, then you should appeal to the BPAI.
Because I will thoroughly enjoy crushing you at the Board . . .
That seems like a fairly simple issue to take up with the SPE/director. Your failure to find your phone on your desk and the appropriate phone numbers is your own fault.
—————————————–
6, that’s what we finally had to resort to. I always hesitate to go to the SPE right away when the Examiner makes a clear error that he or she should recognize and have an opportunity to correct without oversight. But in this case, after nearly two years (I got the case relatively recently), I had to resort to the SPE route.
And don’t forget, the entire critical period for diligence must be accounted for by “affirmative acts or acceptable excuses”. The MPEP explains it quite clearly, and provides a ton of examples as to what an “acceptable excuse” is or is not.
There are heavy penalties for falsifying information or lying under oath. Someone mentioned them in another thread…
“felony perjury, 18 USC 1001, and five years and/or $250,000. Every declaration you’ve seen should mention the possibility of fine, imprisonment, or both, as well as that statutory section concerning fraud and false statements. See 37 C.F.R. 1.68.”
“In that case why bother with the document in the first place. If the sworn statement by it self is not enough, I don’t see how a document intentially withholding the information helps.”
If by “the information” you mean the date itself, I don’t have a definitive answer for you. The answer by “don’t bother” provided a more detailed explanation than I did.
I want to clarify, some documentation that is provided with dates redacted provides other information that may not be redacted. For example, proof of conception (a prior clear description of the claimed invention) which matches directly to the claim(s) at issue must be clearly visible within the evidence and not redacted.
but, but, but Yo Quiero Taco Bell, the applicant hasn’t “truly” paid for what the real examination and real office action actually costs…
There 6, I have furnished your non-sequitor response for you. See, I can be nice.
“Says whom?
I don’t even see that nonsense in the MPEP.
Entitled. LOL. You’re also “entitled” to a patent amirite? LOLOLOLOLOLZ. Curious, you bring the laughs.”
Entitled? The applicant has PAID for a real examination and a real office action. I think that makes the applicant entitled.
Np WCG the site just has some delay here lately.
ESD’s, Rader took a rather left field position, and I wouldn’t count anyone except Newman buying it. Linn won’t. Michel won’t. Moore might based upon her previously written works but I think upon further inspection she will also not take Rader’s position. The rest are up for grabs. Toss in Bryson and Prost and Rader’s party starts off at a -2 person disadvantage.
But, with Rader citing lines like “the “critical feature” of a procedural, non-subtantive rule is that “it covers agency actions that do not themselves alter the rights or interests of parties, although it may later the manner in which the parties present themselves or their viewpoints to the agency” (which is precisely what the new rules attempts to do) to supposedly support his position by reciting the following “the issue is therefore one of degree … our task is to identify which substantive effects are sufficiently grave” he’s not likely to gain much support from his fellows. The rules are blatantly not “sufficiently grave” if the CAFC has confidence in its own ability to judge IC due to issues with ESD’s.
I believe if the attorney had spent some time discussing with Rader about how he certainly must have confidence in his and his fellows ability to apply the law to IC situations then perhaps he would have been more persuaded since his main issue (so far as “substantiveness” of the rules goe) appears to be with the insufficiency of the ESD “way out”.
He might also have gone a step further and asked Rader how a burden is being shifted when this is an entirely different type of burden than those addressed in the prior cases and which are currently in existence.
I also find it rather hilarious how, in Rader’s dissent, he says on the one hand that whether or not a rule is substantive or procedural under the APA notice and comment guidelines is completely irrelevant to this case, and then goes on to try to use that same guideline to determine it as being a substantive rule later.
Always a good listen:
link to oralarguments.cafc.uscourts.gov
The DC wants the rules dead either way so they’ll end up dead. Now this is just about the office preserving its rulemaking authority, and perhaps enlargening it.
“A sworn statement regarding the date is sufficient”
In that case why bother with the document in the first place. If the sworn statement by it self is not enough, I don’t see how a document intentially withholding the information helps.
“Ok, so can anybody explain to me why a document with all the dates redacted should be considered proof of a specific date?”
Because the applicant includes a declaration that all the statements are true (i.e. “The dates that have been redacted are prior to the effective date of the prior art reference(s)”) and if later proven not true (e.g. during a litigation when the documents will be discoverable without the dates being redacted), the patent will be unenforceable and the declarant subject to other penalties.
And it is not proof of a “specific date.” It is proof that conception and reduction to practice occurred prior to the effective date of the reference(s). That is all applicant is required to show during prosecution. Applicant is not required to prove any specific date(s) before the reference(s).
I wonder why the PRIMARY examiner did not pick up the phone (or walk down the hall) and double check the matter with his SPE/director, when he was dealing with an insistent applicant.
Wonder why the PRIMARY examiner did not pick up the phone and double check the matter with his SPE/director, when he had an insistent applicant.
“We’ve been fighting a PRIMARY Examiner for over two years who insisted that dates cannot be redacted in the Exhibits to a 131 Declaration. Must have gotten her stamp at K-Mart.”
That seems like a fairly simple issue to take up with the SPE/director. Your failure to find your phone on your desk and the appropriate phone numbers is your own fault.
I had to deal with that issue a few years ago and didn’t fight it when some folks told me it is fine.
I’m not an expert, but I’ll do my best…
A sworn statement regarding the date is sufficient because such statement is considered true. A date is simpler than other things, such as proving conception for the claimed subject matter, which is a more complicated determination the examiner must make.
Ok, so can anybody explain to me why a document with all the dates redacted should be considered proof of a specific date? I’d prefer some sort of logical rational but i doubt there is one so I’ll accept a legal basis instead.
don’t bother says “Just appeal”
There are about 12,000 cases ahead of you at the BPAI. It will take years to get a decision.
“We’ve been fighting a PRIMARY Examiner for over two years who insisted that dates cannot be redacted in the Exhibits to a 131 Declaration. Must have gotten her stamp at K-Mart.”
What are you fighting about? You filed the 131 Declaration. The examiner refused to withdraw the rejections. Just appeal.
*******”We’ve been fighting a PRIMARY Examiner for over two years who insisted that dates cannot be redacted in the Exhibits to a 131 Declaration. Must have gotten her stamp at K-Mart.”********
That’s simply unheard of. Redacting the dates in the Exhibits is standard practice.
Did the Declaration contain a statement that all dates redacted from the Exhibits predate the “Effective Date?”
Patent term adjustment for Examiner error unjustifiably forcing Appeal or even additional Applicant responses is not enough. There should be bonus term or refund of some fees or something like that.
But its all good when they allow the case three years from now (already three years in prosecution) and after the applicant needlessly pisses tens of thousands of dollars down the drain — No harm done!
Posted by: Anon E. Moose
————————————————
We’ve been fighting a PRIMARY Examiner for over two years who insisted that dates cannot be redacted in the Exhibits to a 131 Declaration. Must have gotten her stamp at K-Mart.
RKS: “Can anyone make sense of the argument against claim 19 on page 10 of the action?”
The concern comes with the use of the terms “and” and “or”.
If you disclose “returning A or B in response to a single query”, you do not inherently provide support for “returning both A and B in response to a single query”. At least, that’s what I think the argument is.
6 says “You’re also “entitled” to a patent amirite?”
You are wrong, unless the application complies with all sections of the statute.
Claim 17 from nero essentially reads:
1. a method comprising:
a. identifying query via means and inputting query to remote query means
b. transmit query from query means to remote server via in/out means
c. receiving a response to the query at the remote query means from the remote server via in/out means.
d. displaying a presentation corresponding to the response on output means
wherein said response is compressed prior to receipt at the remote query means and wherein the now compressed response is decompressed at the remote query means using an asymmetric decompression technique corresponding to an inverse operation of the technique used to compress the response.
then claim 18 says
18. the method of claim 17 wherein said response is first compressed and then attached to information specifying the method of decompression prior to transmittal to said query means.
do you notice how part c in claim 17 does not include a step of “transmitting a response”? It only has “receiving a response”. Are we then to presume that there is a “transmitting or recieving a response” limitation at the beginning of (c)? Or is the transmission only supposed to be an additional limitation? We’ll never know because in the ordered list, transmission of the response never shows up. Thus, the examiner alleges (not me) that claim is inappropriately broadened, because it might now read on things which it wouldn’t have before.
Amateur method claim drafting. I see this mess all the time. They could do better with claim 18.
As a side note, I’d like to point out how amateurish Nero’s claim 17 is written. Look at the wherein clause, it has (e) before it. “wherein” and all the steps with “ed” on the end of the words are not method steps ya jackas.
I wonder if there was an additional 112 2nd just for putting (e) before “wherein”. Does the wherein clause have to happen after all the previous steps are completed? What about since the wherein clause itself designates what it is talking about as happening prior to a previous step?
I have to wonder if he let a recent grad draft his response for this case?
“Second, no matter how “crappy” you may think the application is, it is entitled to a solid examination and solid office action(s).
That is your job.”
Says whom?
I don’t even see that nonsense in the MPEP.
Entitled. LOL. You’re also “entitled” to a patent amirite? LOLOLOLOLOLZ. Curious, you bring the laughs.
As comical as “Boss 12” seems, he is more the norm than the exception at the PTO. I know because I was there many years. I hope that Kappos deals with this major cultural flaw in the examining corps.
Boss 12 says: “However, you’re wrong that “crappy” applications deserve “golden” art rejections.”
First, I don’t know what a “golden” art rejection is.
Second, no matter how “crappy” you may think the application is, it is entitled to a solid examination and solid office action(s).
That is your job.
6 says: “Yes, he made claim 18’s scope larger than previous claims in any way.”
Um, how? Saying that he did is a contradiction of the quotation to 37 C.F.R. 1.75 that I cited to above: “Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim.”
RKS
“But do us all a favor and stop whining like the little cry baby you are every time somebody takes a shot at you.”
but, but but, JohnDarling, that’s gratuitous.
Les: “the frequency with which improper omnibus rejections…”
I’ve seen this as well, beginning roughly fiscal 09Q3. One recent final rejection cited new art, threw up two “clearly anticipated’ rejections and a third OBISS (Obvious Because I Said So) rejections over one of the two reference and no other art. One paragraph was all it took to move the case of Examiner Blowhard’s amended docket. Clearly backlog reduction at the expense of integrity.
But its all good when they allow the case three years from now (already three years in prosecution) and after the applicant needlessly pisses tens of thousands of dollars down the drain — No harm done!
**********does the Applicant have the right to expect the best possible art rejections?
My answer: F no.***********
This is the kind of attitude I have come to expect from Examiners in the software art units. This is what I have been talking about.
To “curious:”
You’re right to edit “crappy” applications before filing them at the USPTO.
However, you’re wrong that “crappy” applications deserve “golden” art rejections.
If the applicant does not care to file a decent and proper application (no matter how much money he/she has to spend on filing/prosecution), then he/she should NOT file a patent application.
Additionally, money spent on the “front end” (i.e., filing a well-written application that recites claims patentably distinguishing the invention from the art) will save lots of money during prosecution.
Spend some money now (before you file), or spend lots of money later (during prosecution) . . . it’s the Applicant’s choice.
Robert,
Yes, he made claim 18’s scope larger than previous claims in any way. No no in reexam.
Yes, “transmitting” is not in claim 17, in claim 17 you basically have “receiving”, thus the claims have been again enlargened in a way. No no in reexam.
Those particular rejections, at least from the description provided by the examiner, are far from grasping at a straw.
To “don’t bother:”
I just posted a few serial numbers and clicked on the “Post” button WITHOUT saving my text. Now, the serial numbers are gone forever.
I’ll tell you what . . . post the name of your law firm (or your name), and I’ll find some “crappy” patent applications being handled by your firm (or by you).
“I haven’t read over the whole thing, but I hope for the examiner’s sake there are some rejections in there that don’t seem so much like grasping at straws.”
You can sleep easy tonight, my friend.
“Serial numbers, please.”
What is the serial number of that patent application with 958 claims, including some that read on sonar? I recall that it was filed by a former partner and “patent expert”. That’s one of my favorites.
But you can just go on over to 12:01 Tuesday and scroll through the archives. Plenty of garbage there. Tip o’ the iceberg.
To “don’t bother:”
Coming right up. (Of course, it won’t be a patent application on my docket.) Won’t take but a few minutes . . .
Can anyone make sense of the examiner’s argument against claim 18 on page 7? It seems to be arguing that a dependent claim does not import all the limitations of the independent claim upon which it depends. 37 C.F.R. 1.75: “Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim.”
Can anyone make sense of the argument against claim 19 on page 10 of the action? “However, the general statement that ‘the present invention is directed to devices and methods for transmitting, retrieving and storing both compressed and non-compressed data responsive to a query’ do [sic] not provide adequate support for transmitting ‘compressed’ and ‘non-compressed’ data in response to a single query as the invention disclosed as a whole is directed to ‘compressed or non-compressed’ data in response to a single query.”
I haven’t read over the whole thing, but I hope for the examiner’s sake there are some rejections in there that don’t seem so much like grasping at straws.
RKS
“I could go on and on with examples of ‘crap.'”
Serial numbers, please.
Boss12 writes: “Question: If the patent application is crap, then does the Applicant have the right to expect the best possible art rejections?”
The answer is yes.
If the examiner does not care to issue a decent and proper prior art rejection (no matter what the quality of the application), then he/she should find another job.
(I frequently receive crappy insufficient disclosures from clients, but I don’t attach a declaration and cover sheet and file it. I work with the client to prepare and file a good patent application. Frequently the clients are very difficult and more often than not these days I have to “eat” some of my time.)
Point #1:
Professor, an “assistant examiner” is an examiner who is NOT a Primary Examiner. Thus, an examiner who has been examining patent applications at USPTO for 15 years and who is NOT a Primary Examiner is an “assistant examiner.”
Accordingly, your statement that “Newly minted patent examiners play the role of ‘assistant examiners’ at the US patent office” is only partially correct.
Point #2:
The following is in response to those patent attorneys who complain about “crappy rejections.”
I examine the computer software art, and the percentage of “crappy” patent applications coming across my desk is incredible.
Poorly-written descriptions of inventions, ambiguous terms used in the poorly-written descriptions, crazy-broad claims (using the ambiguous terms), applications written in non-idiomatic English (submitted by English-speaking “patent attorneys”) . . . I could go on and on with examples of “crap.”
Accordingly, Point #2 is: it works both ways.
As an aside:
The quality of the art rejections that a patent examiner writes into his Office Action just might be based on the quality of the associated patent application.
Question: If the patent application is crap, then does the Applicant have the right to expect the best possible art rejections?
My answer: F no. If the Applicant doesn’t care enough to submit a 24K Gold patent application, then why should I give him 24K Gold art rejections?
I always base the quality of my art rejections on the quality of the patent application. Crap in, crap out. Gold in, gold out.
Food for thought . . .