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.
…but-t-t-t, I’m the famoose 6. I-I-I know more lawl than you (just don’t have me give an example).
6, I found the above response in the trash can (must be the one you grab all your responses from).
Since I know that you have taken my advice and are busy actually trying to do your job and rpovide service to your customers, I thought I would post it for you.
*******4-5 years from now I can simply offer to perform your job many times better than you (since I’m not incompetent) at less than they pay you. *******
FYI, 6, most patent attorneys were not formerly Examiners. Most patent attorneys, especially Top Firm partners, and hiring partners in particular, think that those who were formerly Examiners think too much like an Examiner, especially when drafting claims. You might want to evaluate how you are going to approach that issue in interviews. You might get lucky and find a small firm made up of former Examiners. But, more typically, it’s not the selling point you might expect.
“I’m not going to get pulled into a discussion…”
From the briar patch kid – nice track shoes 6. They match your skirt vey nicely.
You have met my low expectations on substantive discussion about all those lawl’s that you can read and know better. It must be nice there in your fantasy land.
Lost and Confused: great comment. Sorry I led you to think that I’m curious. Not intended. You wouldn’t by any chance be “confused SCOTUS”, would you? No, I thought not.
“you have no clue what 37 CFR 1.2 stands for”
It doesn’t “stand for” anything you jackas.
I’m not going to get pulled into a discussion about any more of your reta rded “beliefs” about the lawl today.
“But you should consider that most examiners consider this kind of construction to be “proper” due to court decisions commanding BRI.”
That has nothing to do with BRI. That term has an established meaning which should take you no more than an hour of searching to find a reference (evidence) showing. Oh wait, what’s that? Art is hard to find? Excuse me while I LOL MY ROFL CAKES.
” If the claim can be misconstrued, they reason, it should be, as the applicant can clarify with amendments.
But the problem is, there are dire consequences during reexamination.”
They’re probably right, and if you’re too lazy to find evidence of that term’s usage then you can feel free to accept whatever consequences befall you and I will shed nary a tear.
MaxDrei wrote, “Another, I’m curious.”
Now I’m really confused. Your writing style is nothing like that of curious. How do you keep them separate?
“And court decisions will never stop “going my way” re discussions with NAL because I can read and know tha lawl better than NAL does. Don’t think I’m bragging because that isn’t saying much.”
“never stop” 6 – name one true court decision to even start (Not a BPAI crap).
Can you say Alappat? Can you Cacheris? Know the Law? – you believe the crap your SPE tells you about what part of an application you are required to examine – by the Law. You think 151 gives you the right to make up your own understanding “under the Law”, you have no clue what 37 CFR 1.2 stands for. Ever actually finish (much less start) the sentence diagramming of 112 Paragraph 1 (even with your own wiki reference blatantly showing you to be in error)?
grab your track shoes 6, the race is about to start. The only “never stop” you know is the “never stop” to your running away.
It aint bragging 6 – it just aint true. You have a hard time with simple reading comprehension, let alone legal reading.
Let’s hear one of your famoose juvenile responses while you get me a sandwich, boy. It’ll give you some time to come up with a substantive reply (but I won’t hold my breadth for that).
“But the problem is, there are dire consequences during reexamination.”
Ned, are you saying that the consequences of amending a claim are more “dire” during reexamination than during the initial prosecution? If so, why?
6 no doubt the argument can be made that the claim construction was improper. But you should consider that most examiners consider this kind of construction to be “proper” due to court decisions commanding BRI. If the claim can be misconstrued, they reason, it should be, as the applicant can clarify with amendments.
But the problem is, there are dire consequences during reexamination.
“when it looked looks things were going his way (rules packages, court decisions, etc.), but he seems bitter and small now.”
It still looks that way. Kappos simply decided to shoot himself in the foot before getting down to business.
And court decisions will never stop “going my way” re discussions with NAL because I can read and know tha lawl better than NAL does. Don’t think I’m bragging because that isn’t saying much.
“Yet despite this, I understand from you that these “inventors” rarely if ever file anything that is remotely patentable?”
Nothing could be further from the truth. I have already told you guys that we have an eventual allowance rate of approximately 80%+. There is a whole lot that is patentable. However, accepting that the scope of your patent is going to be limited to one very narrow embodiment you have shown rather than the entire “concept” of “changing” (i.e. setting to some specific value or relation to a different value etc) the properties of one small part of an entire class of devices (or etc. etc.) is a rather bitter pill to swallow.
Let’s be clear, I take no issue with the “innovation” on display before me day in and day out. What is embarrassing is how it is being claimed. It is just technically irresponsible and is very likely the result of many people with only a minor background (at best) in my art prosecuting/drafting.
I also note that if you were to ask me at the beginning of prosecution to point out the allowable subject matter that will eventually usually be found I could not do it. Even if I were omniscient concerning the prior art I probably still could not do it. I could probably point out some allowable subject matter, but a healthy portion of the time I would not think to go in the direction that the applicant eventually goes in.
It is for that reason that I take less issue with the technical incompetence of the original drafting. Rounds of prosecution are pretty much expected.
“the “inventors” are all geniuses and professors, ”
Most are probably grad students or professors yes, but as to them being “geniuses”, meh, that’s going a bit far. I’m sure there is a fair number of them that just have their bachelors.
“And to reject their simple non-patentable developments you do not need to read scientific journals, you just do a 5-minute Google search?”
What, prey tell, do you think I’m finding with those Google searches? Hint: “scientific” or “industry” journal articles.
In any event, we’re probably not the most technically demanding art out there. I could see some of the bio/chem fields being more so.
“Taco, happens all the time in reexaminations where the consequences of this idiocy is the forced introduction of claim limitations that can have serious consequences on past damages.”
If your attorney isn’t a mor on technically then he should be able to argue that interpretation of “parallel” so long as you used it appropriately in the app.
These posts bring about a question I have to ask myself. Why do applicants pay extra for extra claims? Sure if it is only a few than it will probably not impact the search. But each claim divides the search time. Do they expect miracle examiners, who do the same job regardless of the number of claims?
Don’t they realize they would get more value by filing a copending application with the same specification?
To use the “menu analogy”, don’t applicants realize that some items on the menu are a bad buy?
Taco Bell said: “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.”
Taco, happens all the time in reexaminations where the consequences of this idiocy is the forced introduction of claim limitations that can have serious consequences on past damages.
Not only do the examiners do not care, but the infringer bar sees this as the real boon of reexaminations.
6, relating to your 10:18 PM, a serious question.
You write: “We deal routinely in applications that involve…complicated physics concepts (optics, physical phenomena, etc., even thermo occasionally), higher level math, chemistry (basic all the way up to … advanced), materials science and some of the most advanced manufacturing processes and process concepts on the face of the planet.”
That is probably the most advanced and difficult art group, where the “inventors” are all geniuses and professors, working at the cutting edge of science and technology.
Yet despite this, I understand from you that these “inventors” rarely if ever file anything that is remotely patentable? And to reject their simple non-patentable developments you do not need to read scientific journals, you just do a 5-minute Google search?
To be honest, I am surprised because I would have thought that you would be exposed to serious innovation.
Doesn’t that surprise you?
6 always seemed small, but you are right – he is more bitter now. It must suck to be him.
However, his laughs then were empty and meaningless, much like his posts and his understanding of law.
He does have his persistent shield of ignorance, though. I heard it as been adorned to match his skirt and track shoes.
Noise, then he ties the knot, slips it over his neck, and jumps from the branch . . .
6 can dish it out (lamely), but sure can’t take it. He was all laughs when it looked looks things were going his way (rules packages, court decisions, etc.), but he seems bitter and small now.
You mean no matter how hard you try you’ll never understand what “balls” means. It is because you are female.
No matter how hard I try, I cannot come up with a post that displays the inanity of 6 better than his own post immediately above.
Not only does 6 bring the rope, he brings the tree as well.
“Compare Lord Kappos and your former man-crush Dudas – who has a bigger set and actually has made substantive changes (changes, that is in a positive direction)?”
Dudas wins hands down. Not only does Dudas win hands down, Kappos gets “negative” substantive changes because of his undoing that which Dudas did.
In figurative terms, Kappos might have some, but they receeded back up into his body so far that you’d never know it.
6, first malpractice and now boss – you don’t have a clue do you? Compare Lord Kappos and your former man-crush Dudas – who has a bigger set and actually has made substantive changes (changes, that is in a positive direction)?
Jame, thanks for the witless and gratuitous comment. Nice to see you join your skirt and track shoe teammate.
My dox have practically been put up in their entirety already. But if you need more information ok np. We deal routinely in applications that involve, inter alia, complicated physics concepts (optics, physical phenomena, etc., even thermo occasionally), higher level math, chemistry (basic all the way up to dam advanced), materials science and some of the most advanced manufacturing processes and process concepts on the face of the planet. Temporal issues, issues of scale, issues of inherency (due in large part to the mat. sci), issues of implicit disclosure (due mostly to disclosures being written to those of ordinary skill) are all among routine issues we face, if we choose to not be lazy and face them. Occasionally we’ll do just a simplistic device structure.
6,
You tell me about your art & I’ll tell you as much about my art. And, no, mine is definitely not one of those rinky-dink mechanical arts who get all of about 4 hours, maybe 6 now, per count as a primary.
MVS
” Obviously not, because you would know that I don’t fear malpractice – my practice is well, thank you. ”
That’s not what I heard.
“Get to it before Kappos takes that away.”
If Kappos thinks he has the balls to do that then let him try.
Here’s a clue since you don’t have one: he doesn’t.
“The cashier does not get to decide to give me an empty bag when I have ordered and paid for something else.”
You never get an empty bag. At the worst you get a happy meal with chicken nuggets rather than a hamburger. And even that is rare.
“Obviously not, because you would know that I don’t fear malpractice – my practice is well, thank you. ”
Obviously you didn’t understand the comment. Nothing new.
“I realize that you got fired from your last job for trying exactly that, and in your mind you think that you taught that customer a lesson, but you really didn’t.”
Fired from my last job? LOLOLOLOLOLOLOLOLOLOL, but beware for your own job. 4-5 years from now I can simply offer to perform your job many times better than you (since I’m not incompetent) at less than they pay you.
The one thing that I will never understand is how you can fool your boss into thinking that you have something of value to say to contribute to patent prosecution of any kind. Do you just blow him every night before you leave? Make him sandwiches?
Your place is to examine applications to the requirements of the Law. Get to it before Kappos takes that away.
6,
The “menu” is another of the arguments I own you on – do you really want to try that losing battle? It’s like you are a trash talking Titan, and I’m a Patriot, pointing up at the scoreboard.
Give me what the Law says for you to give me, okay little boy?
The cashier does not get to decide to give me an empty bag when I have ordered and paid for something else. I realize that you got fired from your last job for trying exactly that, and in your mind you think that you taught that customer a lesson, but you really didn’t.
You did cause me to chuckle at the hint of malpractice – I thought you thought you knew who I was. Obviously not, because you would know that I don’t fear malpractice – my practice is well, thank you. You on the other hand clearly do not understand the practice of law, and continue to happily spout nonsense.
Most people, 6, really care to speak only on those things they know. You are happy to speak away on anything, proving that you know nothing on everything. I guess that’s part of why its such a pleasure ripping you apart.
“I would be being paid more for that activity.”
All you’d do is do it for a year or so and then get hit with malpractice suits out your arsehole because of your “incompetence”. Then you’d be back here saying : “But if my clients had given me more time and not limited me to 8 (18, 28, 280, 2000000000000 hrs, etc. take your pick for a given case) FU CKING HOURS FOR 200 REFERENCES then there wouldn’t be an issue. THEY GOT WHAT THEY PAID FOR!!!!!!!!!1111!!!!!!!!” Or at least you would in a sufficiently advanced art. Perhaps your particular brand of toilet paper art isn’t that bad and you might skimp by.
“That’s not your place. ”
Actually that is precisely our place.
MVS it would be very helpful for you to just go ahead and let us know what sort of art you examine. Technically complex? Toilet paper holders? Golf clubs? Composite materials? Basic low level nonsense? Come on, just generally describe it.
“(and paid the menu price – we don’t need to go there 6, unless you want me to slam you yet again).”
Noise you know what? I agree with you. You paid the “menu” price that was set by corporate headquarters who apparently have no idea how much a filet costs.
So, my recommendation to you when you get a happy meal after believing you were supposed to get a filet is to sue the Federal Government for false advertising.
Unless you already posted all over the interwebs that you know very well that you’ll only get a happy meal and everyone else knows it too, even if the sign does say “filet”.
But whatever you do, don’t bit ch to the cashier about getting a happy meal that someone somewhere thought it would be cute to rename “filet meal”. And don’t “blame” the cashier. He’s only giving you exactly what corporate headquarters and management allows him to give you.
What do you expect the cashier to do? Go out back, magic you up a cow, kill it and bring you the filet?
One last issue. I generally agree that the applicant should not be forced to do a preliminary search. Ultimately, it is the examiner’s responsibility to do the search & they know (or should) know the art better than a searcher.
Where I do disagree is whether an applicant should willingly do a preliminary (not a comprehensive) search.
If the applicant, or the attorney, do a short preliminary search (and I am talking about a 15-30 minute Google search, maybe just in the patents database – nothing comprehensive and probably using the terms in the claims) they would get a better idea of what the general state of the art is and how reasonable the breadth of the claims really are.
This could save a LOT of effort, as well as money for the applicant, in the long run by starting with claims that might not be so unreasonably broad as to read on whole subclasses or on unrelated things. This may help to prevent a lot of the problems we see with prosecution these days.
Of course, this does raise the issue of having to then cite anything you find & maybe defend the search or what was looked at if it ever goes to litigation, which is a problem with the legal system. It encourages the applicant to NOT know about anything. That gives them deniability. If they do a search they may uncover something, or someone may allege that they did or should have uncovered something, and can lead to invalidation. Something that needs to be changed in the legal system if we are to improve things.
MVS
Noise, as well as others,
Your post @ 6:12 above is something I generally agree with. It IS the examiner’s responsibility to read & understand the disclosed invention, as well as what is actually being claimed (not always the same – quite often NOT the same thing), and to find the best art for the claims as well as for the disclosed invention and make it of record.
Where I, and probably a lot of examiners, run into problems with what you & a lot of attorney preach is what you leave out.
Firstly, often what may reasonably read on the actual claim language is somewhat different form what is disclosed as the invention. This can often result in rather different searches. Simply searching for what is disclosed may often miss prior art that reasonably reads on the claims due to their breadth. For example, just because an invention is disclosed as a “cell phone”, if the claims instead recite a “transceiver” and doesn’t get into claiming items like CDMA, if the examiner limits the search to class 455 (where the cell phones are classed) they will probably miss many other types of communications devices that are classified elsewhere & that would read on the claims. This is one point that attorneys seem to not understand (or not want to?). I am NOT complaining about having to do the wider searches, as this is what we are supposed to do. I am just explaining something that you all seem to not “get”.
A second issue is that we see a LOT of responses where it seems that the attorney is not doing their job. Maybe you just have to do what your applicant tells you. But whatever the reasons, we often see things like:
1) claims amended to read directly on other relevant art we cite in the 1st action;
2) not responding to rejections;
3) not changing dependencies when cancelling claims;
4) arguing that a TD is not required to overcome an ODP because the reference & application would expire on the same day anyhow;
5) amending claims to create clear-cut antecedent basis issues;
6) remarks arguing issues that are technologically incorrect;
7) etc…
And this doesn’t even get into things like attorneys coming into interviews & not knowing or understanding the invention or what in the claims correspond to what parts of the disclosure (had this happen way too many times).
WHY?? This just wastes our time & the applicant’s money. And helps “force” RCEs.
And these are just a few things off the top of my head on a Saturday night. I could come up with lots more of common time/money-wasting errors that we see all too often. YOU may not do them, but a lot of your brethren out there do. So, just like you rightfully get POed with examiners that crank out bad actions, we get POed at attorneys that send in garbage responses. Many attorney friends out there have told me that they & other attorneys at their firms often get the cases that need amendments the day that they are due (particularly with foreign appls.) & are told that they need to respond. How much time & effort really goes into those last minute responses?
See, both sides have a lot of problems & problem people. Yes, examiners need to clean up their act. But it is about time that the attorneys& forms realize that they need to clean up theirs as well.
MVS
I think the business of patent law would **see** a substantial thinning of the herd.
“I for one, disagree with your premise sharply.”
it was meant to be harsh and provoke thought and response. i, like you, don’t think any unethical activities are occuring. but I think the affect of mandatory searching on the business of patent law is worth discussion. I appreciate your view that it will be good for law firm profits. I think it will be bad for law firm profits, but good for the patent system.
I think clients will file fewer cases when they see what the prior art shows, realize what narrow scope remains, and don’t think the rest of the process is worth it.
I don’t believe law firms will recoup the lost drafting costs and lost office action responses by preparing an ESD-type analysis for the remaining cases that clear the professional search. also, there’s no guarantee that such a detailed, “expensive to prepare” patentability analysis will be required by rule or, if one is required, that clients will have their law firms perform the first draft of such analysis (as opposed to the professional searcher that performed the search)
And if firms’ clients are already giving the firms their most promising cases, I’m not sure the firms can expect (1) their clients will send the law firms the less promising cases they haven’t been sending or (2) the less promising cases, even if sent, would be likely to clear the professional search in sufficient numbers to recoup the lost drafting costs and lost office action responses.
I respect your opinion that your practice will thrive under mandated search and analysis. I’m interested if anyone else take noise’s view that requiring a search and analysis would increase law firms’ profits? I think the business of patent law would result in a substantial thinning of the herd.
“If Tafas holds on and prevents vacatur from taking place, would the Office be foreclosed from ever actually making such a rule?”
until Congress mandates a search and/or analysis and provides the USPTO with the ability to implement related rules (some patent reform bills had such)
“Why can’t examiners realize that the “search” aspect belongs to them?”
actually, i’m a patent attorney who can’t understand why applicants believe they are entitled to waste examining resources. why waste the first and/or second office action to get the claims where they could have been with a cursory glance at the prior art?
I counsel clients to have a professional search and explain how it can save costs in drafting and in later prosecution. when they choose to have a professional search done, it finds 102 art on some idea that the inventor thought was novel. that saves at least one office action because the independent claims are targeted and force the examiner to look at more relevant art
Obviously, the above rant is not directed to you shaggy.
To answer your question, generally speaking both the applicant and the Office benefit from compact, focused prosecution. However, such prosecution demands more up front time, and demands a reading and understanding of the entire application, not just a key-word search of the claims. For the applicant, the upfront time is not visible to the Office. For the Office, truly applying a compact, focused prosecution means that the level of effort at the front end needs to be much more and much better.
There are relatively few cases where a non-compact prosecution does benefit the applicant. I’m not sure how that is a concern for the examiner though.
See bread – that’s the answer you will always get – examiners blame the applicant.
C – your job is quite clear – examine the application as it is given to you. If you have trouble doing your job because the time is not enough (which may be a fair gripe), don’t blame the applicant.
If you find that all your applications are higher than the average, then speak up to the right people and have them change the average, or change your mix. Get vocal with POPA – they are the ones that run your contract are they not?
You signed up for the average and you need to take those below average as well as those above average and NOT short change the applicant in order to meet your clock. That’s stealing from the applicant. As “Advice for the future” points out – the applicant has paid for the extras (and paid the menu price – we don’t need to go there 6, unless you want me to slam you yet again).
C – In all practical considerations, you are making your own personal value statement of “wasting time and resources” – that’s an empty and out of line argument. The applicant has paid for an examination – not an examiner to make a value judgment along the lines of what should or should not even be examined. That’s not your place. Every applicant has a right to have their application examined to the merits of the law – not shortchanged by an examiner too worried about time and counts to do the job that the Law requires.
The quality job is NOT a function of the time that the administration gives to you. The quality job is dictated by the Law, not the administration of the law. That’s why Quality = reject, reject, reject is dying the messy death that it is. Why do you think the patent bar fights the Office so much? Know the Law. Apply the Law.
Complaigning about “practical considerations” and using that as an excuse not to do your job is pure crap. Even your example is crap – if the fifty claims are so well known, it should be easy to dispose of them – yet you whine and say that you will have to go the RCE route even before you get through a first response. This is your art field right? You should be able to answer the broad claims quite easily. And yes there will likely be a response wiith amended claims. Guess what – read and understand the application in its entirety rather than the key word search and you will be prepared to point out to the applicant why nothing is patentable or just what may be patentable ON THE FIRST GO AROUND. But yes, – that takes work. Get busy.
I think there’s some miscommunication here. As an examiner, I’m not “complaining” or “crying” about overly broad claims, because it’s not personal to me. I do think that it causes prosecution to be less focused and more drawn-out, but I do the best I can and that’s that. I posted about how it removes the focus from the inventive concept because I assumed there was someone here who cared about such things.
Who has the greater interest in compact, focused prosecution – examiners or practitioners?
“Also, examiners are given the same amount of time to examine an application that has 20 claims as an application that has 100 claims.”
Blame USPTO management on this one. Applicants pay more for 100 claims. 80 extra claims, with none being independent, cost an extra $4000K for Applicants — not an insignificant amount of money. The USPTO charges Applicants for the extra work resulting from extra claims, but the USPTO management doesn’t give the Examiner the extra time to examine them — and then you cry about it to Applicants????
You aren’t going to get any sympathy for doing a shi tty job on 100 claims when Applicants had to pay an extra $4000 for them.
You are focusing your complaints on the wrong people.
breadcrumbs,
I guess what I’m trying to say is why waste the examiner’s time and PTO resources by requiring the examiner to search for 49 of the 50 (or even 50 of the 50) claims that both applicants and the examiner clearly know is well known? I take issue with applicants who try to throw in everything, including the kitchen sink, and wait to see what sticks. This type of practice places an unnecessary burden on an already burdened system.
Also, examiners are given the same amount of time to examine an application that has 20 claims as an application that has 100 claims. So in light of these practical considerations, which application do you think is likely to have a higher quality examination?
appealho,
Yes, I always read the specification as well. However, from my experience, I find it difficult to dispose of a case before an RCE when the original claims are so broad that signficant amendments have to be made before allowance (I’m assuming that the case will not go abandoned). From my experience, these amendments usually take several rounds of prosecution.
C: If an RCE needs to be filed, is it because an Examiner failed to focus on the important issues early-on? I doubt it.
Most likely. Do you read the specification? I did, every time. I knew what to search and found the best art up front. Claims get amended, application allowed, or abandonment. It works. I know because that is how I examined for many years.
Can the Office unilaterally attempt to create Law that materially affects how “an application is drafted”? Wasn’t that the crux of the now defeated Rules?
C – perhaps the reason why the focus is on the examiner is because that is the part of the equation that the Office completely controls. It appears to most of the patent bar that is also the part where the blame also actually belongs, regarless of the drafting of the application.
One should remember that the mandate to promote is aimed at the general populace and application submissions will encompass those by pro se applicants who do not know law – the welcome gate is a very wide gate for a reason. This necessitates that the Office processes be robust.
Are you confusing Restriction practice with RCE? – You give no reason in your example of one broad claim and 50 broad dependent claims as to why it could not be examined without the need of RCE. Are you artifically constraining your examination to fit within the “square peg” alloted time without regard to the actual aspects of the individual application? If so, that’s a management induced problem – not an applicant’s problem. It is the Office that has decided to grade you on “average” application. There is no law (nor should there be) mandating that inventions fit into pre-ordained “average” size packages – that would be making law to serve those who are supposed to be serving the public. As to “easy”, the law does not mandate that the examiner’s job must be easy. I don’t want to read more into your post than I should, but that’s the message that is coming through.
Why does the blame for the failure of “focusing on the important issues early-on in the prosecution” fall squarely on the examiners? The last time I checked, patent prosecution involves actions taken by both the examiners AND the applicants.
So doesn’t it make sense that there needs to be a change in the behavior of examiners, as well as applicants? What good is it to provide more counts for a first action and less counts for a RCE when an application is drafted in a way that makes it almost impossible to focus on the important issues early-on in the examination process.
For instance, how is an examiner supposed to focus on the important issues when an application includes an extremely broad independent claim with 2 lines, and 50 broad dependent claims also with 2 lines, all depending on claim 1? Do you realisticially think that this type of application can be diposed of quickly and without the filing of an RCE? If an RCE needs to be filed, is it because an Examiner failed to focus on the important issues early-on? I doubt it.
I don’t have a problem with attorneys complaining about the poor quality of work done by examiners. As in all professions, you’re going to have people who do good work, and people who do not-so-good work. The same applies to attorneys. (Believe me, most of the work that I see done by attorneys are pretty crappy.) I do have a problem however, with attorneys complaining about the back-log and how long it takes for a patent to issue, but yet file applications such as the one described above. You can’t have your cake and eat it too.
NAL, it amazes me too. When I was there, when Bruce Lehman ruled, proposed legislation on the hill sought to allow the same thing. We attacked it, took vacation time to lobby aids of congressmen/women on the hill, and put together a grass roots opposition to defeat that part of the bill(s). We even brought in Ross Perot, Dana Roherbacher, Steny Hoyer and others to rally the PTO troops. These examiners posting here like 6 and Mooney are clueless about what can and will happen to their profession if they continue to blame us for their shortcomings!
“but it probably doesn’t offend any patent attorneys here because more searching means less money. because applicants would either see the prior art and decide not to file or, if they do file, their claims would be allowed faster with fewer office action responses” – anonymous at 06:16 PM
anonymous, it appears that you are attempting to paint the patent bar as advancing their arguments out of their concern for their pocket books, rather than adherence to the Law.
I for one, disagree with your premise sharply.
Most of us recognize and care deeply for the ethical rules we follow and while being paid well for our hard work, it is the client that comes first. Pure and simple – this type of mindset is the best business practice. Good work for the client is the best way of guarenteeing future work. Work done firstly for oneself only guarentees a race to the bottom and a disdain for the profession. Your mindset, I would dare venture, coincides with the general view (I know personally of several exceptions) that examiners are incapable of professional conduct. It doesn’t help that you have the likes of 6 and Malcolm painting such a horrible picture of examiners on this well-read blog.
If a client sees pertinent prior art, they need to file it. If I see it, I MUST file it. This in no way correlates with the responsibility to search. As noted abundantly – you need to recognize whose job that is. Don’t be in such a hurry to give your job away.
As for actually searching and making money – I have posted that had the IDS rule been upheld, I would stand to make tremendously MORE money. A certain level of my clients would still want patents even at the greater expense, and since I would be providing the examination per se with the search and analysis (to the Office standards as per the rules), I would be being paid more for that activity. If this, as you propose, actually yielded more and quicker patents, I would make even more money, as my clients would want more patents, even at the greater cost. I would not be limited in my earning capability – that capability would have been expanded.
Your usefulness and viability on the other hand would seriously have been diminished. Kappos is alreadly trying to be able to outsource your job. How much less is needed to review a search and analysis already performed to the government standard, then to do that search and analysis from scratch?
It amazes me that more examiners (at least those vocal enough to post) cannot see this.
“my suggestion is to have applicants search so that they are no longer ignorant.”
And who will do the search? Some searcher that may have searched this particular piece of art once in the last 5 years?
Also, let me cite a little piece of case law for you: In making a patentability determination, analysis must begin with the question, “what is the invention claimed?” since “[c]laim interpretation, … will normally control the remainder of the decisional process.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987).
Until applicants know how the Examiner is interpreting the claim language, how can we properly do a search?
Why can’t examiners realize that the “search” aspect belongs to them?
Us attorneys would also like to know what is new verus what is old. It is a big waste of time to spend 15 pages describing what is new and only 2 pages on the “new” aspect because the inventor didn’t realize the difference between the two. However, that is just part of the job. We describe what the inventor believes to be the inventor. Then, WITH THE HELP of the USPTO (i.e., the Examiner) we then try to determine what is patentable and what is not.
There are exceptions, but on the whole, there is nobody more qualified to perform the search than the Examiner.
“I said that it would be a good idea to make applicants perform a prior art search by rule.”
If Tafas holds on and prevents vacatur from taking place, would the Office be foreclosed from ever actually making such a rule?
The Office attempt was ruled illegal by Judge Cacheris. If there is no vacatur, the Office as the losing party is held to that rule, regardless of jurisdiciton, no?
Hmmm…I don’t see my last post here so maybe I hit preview instead of post or whatever. The gist of it was, a search for the inventive concept is not enough when the claims go way beyond that. For example, I might have a 103 rejection directed at the inventive concept, but a search of the full scope of the broad claims will likely reveal a 102 for the broad claims which is not directed to the inventive concept. Because 103 rejections can be argued in a number of ways that a 102 cannot, I will search for and apply both. This means that the search and examination is necessarily distracted from the inventive concept to some extent. I’m not crying about the presence of the broad claim, just saying that broad claims are a distraction from examination of the inventive concept.
Practitioners, if you feel you’re getting crappy rejections, appeal. Please. Or at least request the pre-appeal conference so it will get looked at by a few other folks. Keeps examiners honest and gets the stuff off our dockets when we just can’t come to agreement.
Hey fish bones, I was an examiner for a long time before leaving the PTO as a primary. These kinds of complaints coming from examiners make no sense at all, for reasons already given, i.e., they should be the expert searchers in the particular art of the application (if classified correctly). This is all smoke being blown up your behind. Believe me, it is pure B-S-.
Mr./Ms. anonymous — Applicants typically make the business decision whether they (and/or their patent practitioners) will or will not go to the time and expense of conducting a patent search before preparing and filing their applications. If they do not conduct such a search, they will rely on the closest prior art then known to the inventors when preparing the application. Generally, patent examiners will do a better search than even professional patent searchers. Maybe patent application filing fees need to be raised, but if fees are going to be raised I would personally would rather see a small across-the-board hike (e.g., filing fees, extension fees, issue fees, maintenance fees).
Can’t you understand that if you do a good search apply the most relevant art, the claim scope must lie outside what is disclosed in that art for the application to be allowable? This is your frekin job man!
“if applicants lack the skills and databases (as curious suggests) to search, they can hire someone to search for them who does. they hire someone to write the patents for them, right?”
Ha ha, been there, done that, and never will again. Do your job or we’ll have all of you fired and have it done ourselves, but you will be working for us searching – ha ha ha ha
I said that it would be a good idea to make applicants perform a prior art search by rule.
noting what I said, curious wrote, “But that is what examiners are paid to do and they are far more competent at searching in their subject areas than are applicants and they have access to more prior art.”
I believe the comments of advice for the future help demonstrate why I made my comment. advice wrote: “The determination of an ‘overly broad claim’ can only be made with knowledge of the pror art. However, applicants and their attorneys do not have the best knowledge of the prior art at the time of drafting. … Overbroad claims are a result of imperfect information. … ”
advice essentially says: don’t blame ignorant applicants for overbroad claims. my suggestion is to have applicants search so that they are no longer ignorant. currently, applicants consciously ignore the prior art because there is no rule requiring them to have some notion about the prior art before filing.
if applicants lack the skills and databases (as curious suggests) to search, they can hire someone to search for them who does. they hire someone to write the patents for them, right?
overbroad claims (in some cases, ridiculously overbroad claims) can and should be avoided by requiring an initial search and analysis before filing.
the notion that examiner’s are “paid to do” searching of unnecessarily overbroad claims should infuriate people as taxpayers
but it probably doesn’t offend any patent attorneys here because more searching means less money. because applicants would either see the prior art and decide not to file or, if they do file, their claims would be allowed faster with fewer office action responses
“Even Molly can’t help you under your bed.”
Actually Molly could help me under, over or in the viscinity of a bed. And a lot of other places too.
Why don’t you be a doll and make me a sandwich or two? If you be sweet enough and get enough of my favorite wine, who knows, maybe you can help me out near a bed tonight.
At 05:16 PM 6 attempts to apply an argument that I have BURIED him on once before, using the Law of 35 U.S.C. 151 Issue of patent, which in pertinent part reads:
If it appears that applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee or a portion thereof, which shall be paid within three months thereafter.
6 – we’ve been over 151 before – you were wrong then – you are still wrong. That little phrase UNDER THE LAW rules. You are not free to make up the law as you see fit. Even Molly can’t help you under your bed.
For what it’s worth, I know a noob examiner in the academy who’s allowing a case. He says his trainers didn’t give him a hard time about it.
Seems like there would be PTO statistics someplace on the allowance rates for each SPE?
“”Malcolm”,
_I_ am NOT talking about AU 3639. I am talking about arts in various electrical areas like 2100, 2600, 2400 & 2800 (after all this time, I know a lot of people). Not business methods & such.
And you still didn’t answer – Do you actually think that there are no SPEs that rarely allow there examiners to allow cases?
If you honestly can say “yes” then you better check with other examiners, SPEs & directors that know the truth. Again, like I said before, why do you think they went to admin SPEs? The bad ones, in general, became admins so as not to infect the newer examiners.
MVS
“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.”
151
“Unless somebody blows the whistle.”
So Mooney, you’re gonna be a PTO whistle blower?
BWWWWWAAAAAAAHHHHHHHHHAAAAAAAAAAHHHHHHHHAAAAAAAA
That sounds like torture. If the most relevant art directed to the inventive concept is applied, an amendment, if necessary, would need to overcome that art to the point that the application it is either allowable or going to the board (or abandoned instead of appeal). Nothing is more relevant than the most relevant reference. That may sound sill-y, but so does piecemeal searching.
MVS: ” In case you missed the memo, examiners are supposed to allow case UNLESS they can make a reasonable grounds of rejection.”
Are you saying that The SPE In The 3691 Art Unit Who Shall Not Be Named rejected every application (except for the 35 generously allowed cases) based on unreasonable grounds?
Here’s my take: just about every application filed in that art unit is pure crap. For a while, crappy patents were issued because hardly anyone paid attention. Then people started to pay attention. By that time, the applicants had come to feel that they had a “right” to a patent every time they filed an application. So when their claims get rejected they whine and cry as if it was the most unfair thing ever for their incredibly dubious paper “property” to be spat upon by the US government.
But it’s not unfair at all.
In any event, you’ve got Kappos now in the PTO who was head of IBM when IBM filed reams of its own crapola. So everything will be back to “normal” very shortly.
Unless somebody blows the whistle.
“The issue is whether SPEs were illegally rejecting cases without any credible reason…”
While this may be the question, your 90% challenge seems imprudent because it doesn’t address the question. Why not just admit that and move on?
A – because Examiner’s are now concerned with word searches. Examining is like MadLibs – fill in the blank, and if all the words are there, they are done.
Why do you think Examiner’s are no longer capable of agreeing to anything during the interview, including proposed amendments on the fly? Answer – because they no longer seek to understand and search the inventive concept. Word search for claim terms is all that is done, and as a result all they can tell you during the interview is “if you file that I’ll search it.”
shaggy, why do you prefer to search piecemeal? Why not do it once and get it over with? Why torture yourself?
“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)”
Depending on what you mean by “examine the material,” you might be disappointed there. I’m assuming you’re referring to prior art here and not enablement, etc. There’s no way I’m going to start making prior art rejections for subject matter that’s not claimed. I will assume that if it’s not in at least one of the claims, it’s not a vital part of the invention.
Seems to me there should be at least one dependent claim that sort of resembles the invention. If your claims don’t resemble your invention you shouldn’t be entirely surprised to get prior art that doesn’t resemble your invention either.
One of my first cases ever to be appealed, I had a 103 directed to the inventive concept, but the claim was broad. I had to reopen prosecution to make a 102 rejection which read on the broad claim but not the inventive concept. Important lesson learned. That’s the problem with broad claims, we have to reject based on the broadest reasonable interpretation. Often, that means that the search cannot be simply focused toward the inventive concept, but has to go off in a bunch of different directions to capture the breadth.
This is getting bizarre. I am moved to open my office globe/bar and have a drink to start the weekend early.
“Two ‘examiners’ set the attitude that we are here to reject everything?”
What’s with the quotation marks around “examiners”?
You and Mooney are examiners.
“If you REALLY believe that no SPE has ever regularly made their examiners reject cases that the examiner, and others in the art, thought was allowable than you really are a st00ge for the Dudas/Doll/Love?Rolla administration.”
Could not have said it better myself.
ooooooooo 6, MVS touched a nerve
“Not reject because they don’t want to allow a case for fear or think something is “too broad””
For the record I reject because I think an app is not entitled to a patent.
“Thankfully THEY are gone. Now just need you & 6 out of the office to get rid of those attitudes that we are here to reject everything.”
Two “examiners” set the attitude that we are here to reject everything?
I know I’m powerful, but I didn’t realize I was that powerful.
Maybe if you weren’t such a pus sy you wouldn’t need to get rid of me.
“If you REALLY believe that no SPE has ever regularly made their examiners reject cases that the examiner, and others in the art, thought was allowable”
Strawman.
MM, better call Ron, Larry, and company over at your POPA. They may help you in the proceedings.
“Malcolm”,
Do you ACTUALLY expect me to remember SNs of cases that people talked to me about from 1 or 2 years ago?? Are you really as 1d1otic as you like to appear or is it just an extremely good act?
If you REALLY believe that no SPE has ever regularly made their examiners reject cases that the examiner, and others in the art, thought was allowable than you really are a st00ge for the Dudas/Doll/Love?Rolla administration. Thankfully THEY are gone. Now just need you & 6 out of the office to get rid of those attitudes that we are here to reject everything. In case you missed the memo, examiners are supposed to allow case UNLESS they can make a reasonable grounds of rejection. Not reject because they don’t want to allow a case for fear or think something is “too broad”.
MVS
“We’re all laughing.”
That makes two of us.
“I know of a few cases where multiple primaries, including myself, who actually work in the particular art told a PTA examiner that a case was allowable & the trainer STILL would not let the examiner allow the case. Completely wrong.”
Which cases?
“So which is it?”
Who cares? Really?
You work at the PTO. I know that. You know that. Everybody knows that.
You might actually have a shred of credibility if you just acknowledged it. MVS’s posts are infinitely more credible than anything you’ve posted about the PTO.
You and 6 are the court jesters of this site. We’re all laughing. At you. Not with you.
“Malcolm” is COMPLETELY wrong about some SPEs not wanting to allow cases.”
Nice strawman, MVS. The issue is whether SPEs were illegally rejecting cases without any credible reason purely because they were told to do so (or because it was the “culture”). You have no evidence of this happening.
A more likely explanation is that the “culture” of patent *applicants* in that art unit we were discussing is a broken culture because it was born out of the cesspool of speculators and investment bankers who are adept at ruining pretty much everything they get their hands on in the process of lining their own pockets.
And this culture continues unabated to this day, as just about anyone who is not personally benefitting from the game will readily recognize.
Grow up, children. It’s been years now and your pathetic whining has only grown more pathetic as the sand dramatically shifted under your dishonest money-grubbing feet.
db: “Which is not nearly as odd as an anonymous commenter like Mooney doing everything possible to maintain that he’s not an examiner.”
That’s funny because just a few comments upthread some troll (probably you) was whining about how I wasn’t doing enough in that regard. So which is it?