Dr. Shine Tu is an Associate Professor of Law at the West Virginia University College of law. For the past year, Dr. Tu, a former patent attorney with Foley & Lardner, has conducted a massive empirical examination of patent prosecution. Massive, in the sense that Dr. Tu and his assistants examined the prosecution behavior of every patent issued in the last ten years. In Luck/Unluck of the Draw: An Empricial Study of Examiner Allowance Rates, available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1939508 and forthcoming in the Stanford Technology Law Review, Dr. Tu discusses some of the findings from his study. – Jason
Luck/Unluck of the Draw: An Emprical Study of Examiner Allowance Rates
Dr. Shine Tu
One of the greatest banes of a patent applicant is the examiner who will not allow an application that should be allowable. During a trip to the PTO for an Examiner interview, I passed by the office of Examiner X with a sign that stated “0% allowance rate ☺ [ed.: smiley face].” Evidently, the smiley face was inserted to add insult to injury. I asked the examiner that I was with if Examiner X really had a 0% allowance rate, and she said “yes.” (I later verified that this was correct) I asked why this was the case, and she stated, “some examiners believe an allowance is an affront to their being.” Of course, our patent system would be a complete failure if the ability to get a patent was solely determined by which examiner you were lucky/unlucky enough to draw.
In an attempt to determine the extent of this behavior, I set out to comprehensively study allowance rates of specific examiners by art unit, technology center and the PTO as a whole. To be as comprehensive as possible, I coded over 1.5 million patents in an attempt to code every patent ever issued in the last 10 years (from January 2001-July 2011).
The results of this study were surprising. I found two interesting populations of examiners. First, I found a significant population of examiners who on average, issue a disproportionately small number of patents per year (low allowance rate examiners). Second, I found a small but significant population of examiners, who on average, issue a disproportionately large number of patents per year (high allowance rate examiners).
The first population of low allowance rate examiners consist mainly of secondary examiners (junior examiner usually with less than 5 years of experience and no signatory authority). These examiners, on average, issue a very small number of patents per year (less than 5 patents per year). For example, between 2002-2011 in technology center 3700, approximately 17% (306 examiners) of the examiners issued less than 0.35% (823 patents) of the patents in this art unit. Accordingly, these low allowance rate examiners issued approximately 2.7 patents per examiner.
In contrast, I found a second population of high allowance rate examiners that consist mainly of primary examiners (senior examiners usually with more than 5 years of experience and full signatory authority). These examiners, on average, issue a high number of patents per year (more than 50 patents per year). For example, between 2002-2011 in technology center 3700, approximately 12% (215 examiners) of the examiners issued approximately 51% (120,822 patents) of the patents in this art unit. Accordingly, these high allowance rate examiners issued approximately 561.9 patents per examiner.
There are many good reasons why an application should not be allowed. However, one reason that should not play a role is an uneven / inconsistent application of patentability rules. Examiners should be consistent in the way they apply patentability rules within their own docket. Additionally, examiners should be consistent in the way they apply patentability rules compared to examiners within their art unit. This study suggests that examiners even within the same art unit may be applying the rules of patentability in an inconsistent manner.
There are many limitations with this study. First, I note that there is no ideal allowance rate. Second, I note that this is only descriptive data. Finally, I note that I focus only on issued patents. I could not obtain data related to the total number of filed applications for each art unit, thus I cannot calculate the percentage allowance rate per art unit (because I do not have a denominator of “filed applications”). This is a significant limitation because all of these results are limited by the “denominator” problem.
Additionally, it is possible both populations of examiners are doing an outstanding job. That is, it is possible that the low volume examiners are simply getting harder cases (but I am skeptical of this explanation). Additionally, it is possible that the low volume examiners are “doing a more thorough job” since they are mainly secondary examiners and thus have more time to spend per application for review and detailed analysis. Furthermore, it is possible that high volume examiners are doing an adequate job because they are simply more experienced and not only know the field better, but know how to quickly make “good” rejections. In order to obtain some substantive answers to overcome these limitations, I am currently reviewing a sample of prosecution histories to determine if these two populations of examiners truly are applying the patentability rules in an inconsistent manner.
A full draft of “Luck/Unluck of the Draw: An Empirical Study of Examiner Allowance Rates” is available on SSRN at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1939508 and is forthcoming in the Stanford Technology Law Review. Comments are appreciated.
Grandfathering under Article 163(1) EPC 1973 did not carry any duty to read and understand the new scriptures…
American Cowboy,
Your first error is in actually thinking that MaxDrei is correct in how he characterizes patent law in at the EPO.
Max, when I, as a good American patent attorney, read your posts I constantly come away thinking how differently patent law is at the EPO vs USPTO, mostly procedure-wise, but often substance-wise.
It makes me wonder how all of the efforts of the last 20 years to acheive “harmonization” have been worth it.
Inviting Body Punches,
I too have been a party to this posting mechanism of Paul Cole’s (over at ipwatchdog.com). I typically do not post here because the “intellectual dishonesty” is rampant here and Gene generally keeps a better control on his site. That being said, I would hope for better from Paul, as his views are ussually considered, albeit sometimes too one-sided and incomplete.
Paul, this has become a pattern in your posts: you disappear after somebody asks a question about your basic premise or assumption.
The rest of the pattern is that you re-emerge at a later date, and simply repeat your original premise, complete with original assumptions, unchanged.
This is a time-honored strategy for dealing with criticism that you cannot, or will not, answer honestly. It relies both on you having greater stamina than your questioner, and on the relative unimportance of the issue upon which you are pontificating, the next time it comes around.
I will take your silence on this matter as confirmation that your original premise is unsupportable, as it is unsupported when given the opportunity…and I await its inevitable resurrection, hopefully in this forum.
Come on, Phelps, a guy who loves stats as much as Tu knows that a sample size of 1 is more than enough.
Phelps–
This was a better post.
IMHO it points nowhere other than to a registration system.
Your basic premise is that holding individual examiners accountable for unforgivable errors or malfeasance is too complicated and costly to be reasonably implemented, and that in any case, it is either unfair or unjust, as the examiners aren’t given a reasonable opportunity to achieve competence in the time allowed.
Your arguments do reflect current realities, IMHO, that aren’t going to change any time soon. Meaningful management of public costs is no longer possible, and the only workable solution is to dismantle the public structure and shift the burden to the private sector to bear the costs.
IMHO current examination before the PTO doesn’t get you squat. Examiners are expert in neither patent and administrative law and regulation, nor in technology–there are other parties in the private sector infinitely better-situated to carry out their functions.
The PTO would still exist, but not to examine for patentability…there could still be some formal conditions of registrability, but even those could possibly be automated to some extent.
Paul–IMO, they are already doing (b), and have been for a long time–it is only rarely that we actually see an Office Action that even mentions the dependent claims (aside from listing the claim numbers as rejected). Sometimes the Office Action will address a particular limitation of the dependent claims that is important, but usually all the claims are effectively lumped together.
You have just shown that soup is dead wrong (it’s far easier to get counts per rejections).
“It takes just as much “non-time” to indiscriminately reject as it does to allow.”
Are you joking? I can reject indiscriminately within a couple of hours for case after case after case. There is literally no way that sht would fly for more than a few cases if I tried on allowances. Sure, I might could fake a case here or there, but that wouldn’t last long.
“Where you run into trouble as an examiner is when you adequately search and examine the case, find the best art, apply it to the claims, and suggest ways to amend around the best art. Then you spend all of the time allotted (often more), the case fairly rapidly goes to allowance, and the count stream dries up.”
PREACH IT BRO.
Since your proposal for punishing examiners requires an appeal, it also doesn’t deal with the situation where the Examiner is in error, but the applicant chooses to file an RCE, rather than appeal. Likewise, your proposal doesn’t deal with valid rejections doled out over time. Appeals can only deal with invalid rejections. And your proposal is less harsh than the current system in that it would, presumably, require the Board to find that the examiner’s rejection was “one sided,” whereas the current system requires the Ex to work for free just because he or she lost, whether the rejection was one-sided or not.
I agree that some examiners sometimes play the type of games you have mentioned. But neither the current system, which is harsher that the one you propose, nor your system can remedy this problem.
It seems to me that the only remedy for the first kind of game you listed is to make appeal more attractive and accessible, so that applicants will feel more able to appeal “bad” actions. But this costs money and opens the door to frivolous appeals.
And it seems to me that there is no good remedy for the second type of game, where the Examiner doles out valid rejections over time. There are times when examiners legitimately fail to find the best reference the first time around. And sometimes examiners fail to notice 112 issues the first time around. The Office’s system of requiring Ex’s to work for free should they raise new rejections not necessitated by an amendment is an attempt to encourage examiners to get it right the first time, but nobody is perfect, especially when they have 14 hours or so to learn new technology that took years to develop and compare that technology with ALL the technology that has come before.
Thus, I think that room must be made for subsequent vaild actions based on new art. And if you are going to make such room, how are you going to distinguish between game playing and the legitimate use of new art and new rejections? Indeed, how can you be sure that the particular cases you think are cases of game playing really are cases of game playing?
The POPA error is one that I had in mind. In addition, taking POPA membership as relevant is another. Examiner’s are protected, and bound, by the procedures enacted through collective bargaining with POPA whether they formally belong to POPA or not. Protection is tied to whether the exminer is a non-probationary employee or not. Non-probationary status occurs at 1 year. It used to occur at two years.
As I recall, your paper also indicated that no counts were given for final actions. That’s not correct since .25 counts are given. Nothing in the paper seemed to hinge on this, so it’s minor.
In addition, it seemed to me that your discussion on the different rates at which examiners do work appeared to fail to appreciate that the Office requires different work rates for different art units.
And I think that the pay structure is outdated, for both examiners and attorneys. As I recall, the reference you cite dates to 2004.
I think most of these were mentioned, or hinted to, above.
It guess I’m sceptical that just because one ALJ believes he or she could easily determine which cases were one-sided that it actually is easy. The way these things usually go, standards of the usual kinds would have to be implemented. And a kind of case law would have to be developed. We don’t usually leave these kinds of decisions up to the pure discretion of the adjudicator.
You wish to blame me for finding fault with your poor writing.
Sorry, but that will not do.
The situation that is not accounted for in your analysis is when examiners make a “bad” first non-action, and then make another “bad” second action that is final. This garners more counts by forcing the applicant to file an RCE. Either that or abandoning the application, which would also garner counts for the examiner.
This is one of the main situations that I have encountered in practice. A 103 rejection based on reference 1 and reference 2. We would argue (successfully) that reference 2 does not apply based on a scientific argument. The examiner would then issue a FINAL office action based on reference 3, which would disclose basically the same information that reference 2 disclosed. Applicant is then forced to use the same argument that was made against reference 2. This looks like a valid rejection because it is based on new art.
Second situation- an examiner has 4 different rejections (102, 103, 112 1st and 112 2nd). Instead of giving them all at once in one action, they get doled out one by one, non-final, then final, (RCE) then non-final then final. Each rejection is valid, however, the prosecution is prolonged.
Both situations have happened to me countless times in private practice. Ideally, the actions should all be non-final (thus the second and subsequent actions would not garner counts), but this rarely happens. This is but a few of the games I believe an examiner plays to garner more counts.
You also stated that my paper has “glaring” factual errors. The only one that I believe to be valid is the POPA one. That information was from an interview of two previous examiners. There are many limitations, with this study, but I believe I have pointed them out in my paper.
Could you please elaborate on my “glaring” factual errors? I would like to correct them if they are valid.
I note that I have talked with a well established PTO official. He was an ALJ for over 20 years. He had mentioned that it was easy to determine which cases were one sided (actually he said that most cases that come to the BPAI are fairly one sided). If this is correct, then it should be easy for the panel to determine if counts should be removed. He actually suggested that the applicant be refunded the cost of the appeal if the BPAI ruled in the applicant’s favor. I wouldn’t mind a system like that either.
Oh I see, I’m to understand that I’m the one that told everybody up above that a requirement of the EPC is to identify to the EPO, and in your specification as filed, all that matter in the prior art universe of which you do not yet have any knowledge. You know, it is not me whose writings lack clarity but you who is over-eager to find fault with them and, in that over-eagerness, can’t be bothered to read them properly before leaping up to shout “muddled”.
“Did anybody except you ever suppose there was?”
Yes.
You.
See your posts on this thread (and the very point of my replies).
You should choose your words more carefully. I am merely responding to your ill-worded post. If you wish to retract your statement and say what you mean in a more clear manner, please do so. But gathering from your response to a previous request for greater clarity, you do not seem so inclined.
PDF, we need to distinguish what is required to be in the app as filed from what is required to go into the spec before the EPO will allow the case.
As you know, it is the task of an EPO Examiner to object to every application that does not meet every single provision of the EPC and its Implementing Regulations. Typically, objections from PTO Examiners are overcome by amendment, right?
Somebody like you who has been there and done that will surely know about the EPO case that was refused and went to the Board of Appeal because the Korean corporate applicant failed to disclose in the specification as filed its own relevant prior art. For the Examining Division, Applicant could not save the app from extinction by adding it in during prosecution.
On that occasion, the Board of Appeal reversed, saving the app from failure. Given that the EPO doesn’t do Binding Precedent though, who knows what might happen next time up, in front of a differently constituted and less Applicant-friendly EPO Board of Appeal.
But meanwhile, I do so much agree with you, that at the EPO you don’t have to include, in your initial drafted specification, those parts of the prior art universe of which you are still ignorant on your filing date, such as the art the EPO finds for you, after you file at the EPO. In your words:
“…there is no requirement to include any such prior art that is not known to an applicant”
Did anybody except you ever suppose there was?
I’m enjoying this. Your turn again now.
Paul?
Been there, done that.
The distinguishing word is “requires.”
There, you fail. There is nothing you can provide that back up this “requirement” because the inclusion of prior art is not a hard and fast requirement. Analagous to the US law, there is no requirement for an applicant to perform a search of prior art and there is no requirement to include any such prior art that is not known to an applicant. An appllicant is not therefore required to state the difference and an applicant states what is new by the mere fact of submitting an application.
42(1)(b): indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention
“as far as is known… can be regarded as useful” = this quite simply is not a requirement that prior art MUST be included. There is no REQUIREMENT that an applicant MUST “set their invention in the context of the most relevant prior art.” Your naked assertion of this is just not an accurate statement of the law.
As for your muddled interlocutor, your posts are often muddled and for that reason I typically ignore them. This post though caught my attention because like Paul Cole, you are making up law that twists what is actually required from what is otherwise helpful advice. I am amused when foreigners try to make up US law (or even foreign law). But dressing up helpful advice as law is just as incorrect as mistating law. By the way, your interlocutor is correct, as you do not make sense with your treatment of the word “obvious.” Perhaps you are bored or attempting to be provocative, but all that comes across is “muddle.”
link to epo.org
I’ll try. Get yourself to the EPC, for example on the EPO website, and discover there that the Implementing Regulations are deemed to be part of it. Go to Rule 42. Read. Then get back to me with any supplentary questions.
Hope that is helpful for you (and also not too hard for my know-it-all muddled interlocutor above).
“The EPC requires inventors, in their specification, to set their invention in the context of the most relevant prior art.”
Cite please.
Requires…?
PhELPs: “as a member of a state bar, I am sympathetic to the weight of the responsibility born by attorneys.”
Really? Unless you are in private practice and actually have to pay for insurance, or actually have to justify your actions to clients to either receive payment or retain them as clients, you have no actual understanding of the situation–only an abstract sense.
Phelps: “unlike attorneys, examiners are already punished for bad work”
That is laughable. Attorneys are not punished for bad work? Sorry, but that is a load of c.r.a.p. “Bad work” by an attorney is “punished” by malpractice suits, loss of clients, forfeiture of payment, and if there is a public interest involved, professional sanction.
Phelps big issue appears to be with the fact that it is not the patent office that judges “bad work” by patent attorneys, but state boards and clients instead, thereby depriving the PTO of the power of which it is so desirous. I happen to agree that attorney conduct should be scrutinized more closely by the PTO–however, as a matter of efficiency, it is much easier for them to begin to look at examiner conduct.
Phelps calls out Tu for “failing to explicate how the Office could implement a process for distinguishing between those judgments that are clear from those that aren’t”, yet proposes EXACTLY the same process for analyzing attorney conduct, using as his standard conduct that “anyone with any understanding of the subject matter would recognize as ineffectual in moving along prosecution”.
What hypocrisy.
Get real, Phelps.
Such a statement is in effect a confession of pure ignorance of the state of the art of at least complex information processing, QA, QIP, and JIT concepts applied to methods of doing business.
The EPC requires inventors, in their specification, to set their invention in the context of the most relevant prior art. That requirement makes sense, in any FtF jurisdiction, where patentability is judged as of the PTO filing date, AFTER the inventor has had a full opportunity to research the state of the art and AFTER she has completed the task of writing an enabling disclosure which can contrast what is perceived to be the invention against the background of the state of the art up to one day before the all-important PTO filing date.
In contrast, in a First to Invent jurisdiction, the fiction has it that obviousness falls to be judged in relation to an act of conception, on some date long before the app is filed at the PTO.
The concept of the “closest prior art” to an act of conception strikes me as an affront to logic. So I sympathise with those in a FtI jurisdiction who have difficulty coming to terms with the FtF notion of the “closest” prior art.
I suppose that I need not respond since, by IBP’s own admission, he or she has not commented on any of the specifics of my post. However, as a member of a state bar, I am sympathetic to the weight of the responsibility born by attorneys. But, just to re-emphasize it, so the point is not lost, examiners are held accountable for “bad” Office actions. If an action is “bad,” the examiner must do the next action “for free,” without counts. Thus, examiners do have an incentive to produce good actions.
“no evidence in favour of unobviousness on the face of the documtnt”
There is no such fatal defect, because a patent application, in itself, is prima facia evidence of the inventor’s statement that he has an invention. It is all the positive evidence that is required.
I think you are purposefully ignoring where the actual burden is. Remember, an applicant is deserving of a patent unless.
In re Adams does not make the point you think it does. It did not create the legal need or switch the burden like your writing suggests.
Mind, you, it may not be bad or imprudent to write as you suggest, but to make it sound like it is a legal requirement is a gross mistake in your position. You are not empowered to change the actual law to one that you wish were in place. It is your own wishful thinking that is being challenged.
“”tard” is the examination”
An examination is a tard? Try again tard.
The question may be moot, but the answer to the larger question is not.
😉
Thanks Inviting Body Punches.
Really,
When you don’t realize that the “tard” is the examination, you will not, cannot, change.
And it is precisely this lack of ability to change that makes registration so much more appealing.
You keep on making my points for me 6. I ought to thank you, although I suspect that you have no clue that you are doing exactly that.
Paul–
How do you rationally justify your blanket prohibition on individual punishment?
The answer is a registration system, where all those onerous tasks would only be undertaken where they were desired by an interested party, who would bear the vast majority of the associated financial burden.
The gargantuan task then becomes parceled out into many fewer and much smaller manageable tasks.
Does it then become a sport reserved for Kings?
It already is, so the question is moot.
Without commenting on any of the specifics in PhELPs’ post, I will comment on the general theme of attorney accountability.
Hey PhELPs, we are already accountable to the PTO under the canons of ethics, not to mention to our state boards under similar canons and strict rules of practice, but also TO OUR CLIENTS WHICH IS WHY WE CARRY MALPRACTICE INSURANCE.
You want to talk accountability? Let’s talk. Are any of the Secret Service public-sector hacks being held accountable? How many of the “punished” have taken early retirement?
How many of those who have “been dismissed” from the Secret Service have ACTUALLY been re-assigned to different government units?
Real accountability in the public sector? There is no such thing.
How dearly I would love to be able hold civil servants, or public bodies, liable for damages arising from the same circumstances in which an attorney in private practice could be held liable by their clients.
Don’t talk to me about accountability until you have some.
There is no answer. If statutes that Congress draft are open to interpretation, and that’s a group of 535 possible initiators of a statute, try distilling what language means in 200k patents a year, and comparing it to prior language written by others. It’s a gargantuan task any way it’s done.
“The CPC is going to be a huge cluster you know what. They’ve neglected the US classes in anticipation of the CPC, but it simply won’t work in many arts. For example software related classes are completely incompatible between the EU and US systems.”
That’s because “software” isn’t an “art”. You’re just throwing together a cobbling of often functionally, but sometimes not, described artistic written works.
“about the state art, especially software and business methods, and thus just rejects out of pure ignorance.”
Considering that there is no “state of the art” regarding biz methods and softwarez then I suppose all examiners in those AU’s are always rejecting out of pure ignorance.
“You are now worse off because you have wasted a cycle with nothing to show for it.”
Not really. That only applies if you’re like yourself and draft like a tard.
“I await something of substance, with a prescription for action, implementation, measurement, and accountability.”
Which is what I thought about making a website specifically designed for the other day. But then I was like, meh. Let em wallow.
I have said in an earlier posting: don’t punish individuals, change they system. That includes good training and realistic objectives.
But I think that reasonableness is also called for. The decision in In re Klein when posted in this blog gained comments that the combination of references relied on could only have been put together without hindsight using the infinite improbability drive of the Heart of Gold spaceship and that you cannot combine a buffalo with a chicken to make buffalo wings. Objections cost applicants time and money quite disproportionate to the official fees within the USPTO, and good will and good sense on both sides are needed if the system is to work effectively.
Others have already pointed out some of the glaring factual errors recited in the paper. But there there is one other that seems particularly relevant since the author seems to be working diligently to identify whether a problem exists in order to support instituting his proposed solution of punishing examiners.
The author suggests that “another strategy to avoid bad rejections would be to punish examiners who engage in this behavior by removal of counts.” Specifically, the author suggests, “if an examiner rejection is reversed by the BPAI or is reviewed by quality control as issuing out a bad rejection, then counts for those actions would not be credited to the examiner.” The author concedes that “it is true that applicants may bring appeals based on uncertainty in the law,” but believes nevertheless that “those judgments that are clearly one sided for the applicant should result, at a minimum, in the loss of counts.” The author fails to explicate how the Office could implement a process for distinguishing between those judgments that are clear from those that aren’t. But the author asserts that “[a]pplication of punishments would dampen the effects of bad rejections by removing some of the incentives for issuing bad rejections.”
Apparently, the author is unaware that, unlike attorneys, examiners are already punished for bad work. If an examiner has to re-open prosecution, either after a “bad” first action, or after losing an appeal, the Examiner must do the next action “for free,” without counts. The current process has roughtly the same net effect as the Author’s suggested loss of the previous counts. Except, that is, that examiners are, under the current system, also required to work for free even if they wrote a solid rejection that was undercut by factors outside their control, such as when an applicant swears behind a reference, or an applicant files data in an affidavit that overcomes a valid prima facie case.
Thus, the author’s solution is already essentially in play. Perhaps, then, he need not be so concerned about whether his problem actually exists.
On the other hand, since it takes two to tango, as they say, perhaps the author should look into whether the back log, and the low allowance rates are due, in substantial measure, to attorney fault (by the filing of amendments that anyone with any understanding of the subject matter would recognize as ineffectual in moving along prosection, for example). If so, perhaps attorneys ought to be punished by being required to repay their fees should they loose at the BPAI. Examiners are already on the hook this way. If attorneys are so sure of their position, maybe they should put their money, where their mouths are. After all, what’s good for the goose is good for the gander, no?
For the importance of a description of new results in the specification or at least in the file wrapper see In re Adams (1966) where the Supremes refered to “the afterthought of an astute trial lawyer”. Unfortunately what many people think that they can get away with is based on wishful thinking.
Not all results which are thought to be new will in fact turn out to be new. But failure to point out at least potentially new results in the specification is at least potentially a fatal defect because there is then no evidence in favour of unobviousness on the face of the documtnt. The lack of positive evidence is at least an indicator of lack of inventiveness. Based on this negative state of affairs, why should an examiner start with a presumption in favour of the patentee where the person drafting the specification had it in his/her power to provide such evidence and did not do so?
It may be interesting because you are muddling obviousness.
Obviousness is just not a different proposition as you seem to be implying. It is hard to tell what you think you are talking about, since you will not clarify. But if you insist on being confusing (and being confused), I will not stop you. Enjoy.
Can I clarify? No, except to say that determining obviousness (theoretically at least) before the date of reduction to practice, before the writing of the enabling disclosure, as of the date of conception, is a rather different proposition than the exercise of determining obviousness as of a date posterior to that on which the spec was written. You tell me that nothing’s changed but i think something rather important has changed.
I’m just drawing attention to how obviousness is handled objectively in a large First to File jurisdiction, Europe.
The USA is now for the first time a FtF jurisdiction. How it will get to an objective treatment of obviousness under a FtF statute is interesting to me.
Not following the rejection on obviousness here.
Obviousness is a rejection extrinsic to the invention.
You seem to have misplaced your inherency doctrine somewhere.
Also, obviousness (in itself) has not changed under the move to AIA. All that has changed is what art can be considered or not (no swearing behind).
Can you clarify?
Paul,
ALL such cases are presmed to have merit. That is the law.
Further, it is not up to the applicant to spell out what is NEW over and above the state of the art. ALL that is required is for the applicant to describe what he believes his invention to be. You rely on a common but gross misconception that the applicant is well aware of the state of the art and writes his application in the form “this was old, and this is what I propose to be new.” Not only is this NOT the case, there is no legal basis for making it the case.
So Paul do I see it right, that your TSR means Teaching/Suggestion/Result?
My favourite is the blue squash ball example.
Take as specimen claim: Squash ball, characterized in that it is blue. Is that subject matter obvious relative to prior art black and green balls? It might depend on whether the inventor told us in her spec that a human squash player can pick up the flight of a blue ball (against the white wall) faster than a black or gereen ball.
With that statement in there, give her a patent.
Without that statement, I think not.
Subject matter same, prior art same, outcome different.
Under the AIA, obviousness has to be thought through anew. For, under First to File, for the first time in the USA, the event of writing the spec is officially anterior to the date on which the validity of the claim has to be tested, not posterior any more. Isn’t that a relief?
I entirely agree.
But in the 19th centrry case of Loom Company v Higgins the Supreme Court where Justice Bradley said that if there is a new result not achieved before that is evidence of invention.
So all the examiners need to to is to scan the description for new results/benefits/advantages/functions, identify the related claims and search those.
There is no point in searching a claim for which no new result is stated because on the face of the document there is no evidence for the unobviousness of that claim.
If the claim is supported by a new result, then an obviousness objection only arises if a convincing case can be made out under the TSR test. Some cases will fail that test but new result is a pretty good predictor. And if the case does end up in litigation, there will be identifiable and positive reasons why the patent was granted, and even if objections are made out on a more detailed record, the court will be aware that it is dealing with a case that, at least at the outset, appeared to have some merit.
You may not be aware of this but the SCOTUS upheld business methods as statutory subject matter in a 5-4 decision in Bilski Vs Kappos.
In addition to the Supreme Court expressly refusing to invalidate business methods, when specifically petitioned to do so, the United States Congress also chose not to eliminate business method patents or software as statutory subject matter in passing the new AIA.
For any Examiner to withhold a patent to an applicant simply because the invention can be applied to processes for improving or conducting business or applied in a commercial manner is a gross violation of the law and an applicants rights. And IMHO is grounds for dismissal from the Patent Office.
“With that said, do you think it is fair that an applicant will have to go through prolonged prosecution just because he is saddled with a junior examiner who can’t find a primary examiner willing to sign an allowance?”
Of course it is not fair! And for many years I often attributed such acts to the incompetent, belligerent examiner that had simply has no clue about the state art, especially software and business methods, and thus just rejects out of pure ignorance.
But your research has shed new light. And while I am certain there are a fair amount of low I.Q. and willfully obstinate examiners with a disregard for the law, I now understand that perhaps many are simply cogs caught up in a system that rewards them for such feckless behavior. After all, we are talking Government work here.
In the yearly updates the USPTO publishes how many applications they receive as a whole during that year. I have the filing dates of the issued applications from the years 2001-2011 (July 15, 2011). I can then sort all of the patents that issued, that were filed from any specific year and then compare that against the PTO’s yearly report. However, this data is not available on a level where they break it down by art unit or even technology center.
“Actually, both are true.”
Actually it is not true. You need to look at a count per app, my friend, not a net count per any app.
It takes just as much “non-time” to indiscriminately reject as it does to allow.
Actually, both are true. You can get more counts by allowing after insufficient search and examination, simply because you can do more cases because you spent less time on them. You can also get more counts by sending out b.s. rejections for the exact same reason: you spent less time on the cases.
Where you run into trouble as an examiner is when you adequately search and examine the case, find the best art, apply it to the claims, and suggest ways to amend around the best art. Then you spend all of the time allotted (often more), the case fairly rapidly goes to allowance, and the count stream dries up.
You’re right about the Doll/Dudas hangover. It will take years for the reject bias to be extinguished (if ever).
I think he was basing that off of remarks in earlier papers. Obviously the average salary has increased over time, but the point was that you can make more as an agent or attorney than you can as an examiner.
“Both of these are factually inaccurate. An allowance strategy is what can get you more counts than a rejection strategy”
Not true. While the RCE gravy train has been curtiled, you still can get more counts out of a single app by rejecting. Also, as far as I am aware, the “quality review” for allowances (and letting rejections slip by) is still in place.
The point of the matter with probationary still applies, given the preceeding immense turnover rates as a secondary verification. The ability to join POPA is itself a bit of a red herring.
Like it or not, the Examiner “X” is merely a symptom of those (cough Doll cough) who view quality as Reject-Reject-Reject (witness the exuberance over the rejection cliff graph and the equating of that graph with improved quality under the Duffas regime. While Kappos has come in and attempted to right the ship (“Quality does not equal rejct“), the subversive elements are still entrenched in some mid and upper levels of the Office.
The CPC is going to be a huge cluster you know what. They’ve neglected the US classes in anticipation of the CPC, but it simply won’t work in many arts. For example software related classes are completely incompatible between the EU and US systems.
Continued fact check of article:
“Once examiners develop the skills necessary to become proficient examiners, many leave to enter the private sector making two to three times as much as the PTO pays. The average salary for an examiner is $60,000 in contrast to $150,000 for new law school graduates specializing in patent practice.”.
The average examiner comes in as a GS-7, step 10, which pays 67,589. The average examiner with 2-3 years of experience is a GS-11, step 4 ($76,888), GS-12, step 2 ($82,836), or GS-13, step 1 ($95,326). Not sure where he’s getting his pay numbers, but it’s not possible for the average salary to be $60,000.
Fact check on the actual article:
“These examiners may be rejecting applications as a default because (1) a rejection strategy can artificially increase the measurement used to assess examiner productivity (“counts”) and (2) junior examiners may not wish to jeopardize their ability to join the Patent Office Professional Association (POPA)5 by issuing “low quality” patents within the first two years…Once an examiner becomes a member of POPA, it becomes more difficult to discharge the examiner.”
Both of these are factually inaccurate. An allowance strategy is what can get you more counts than a rejection strategy, especially given the new count system with declining counts for each round of prosecution. Also, the POPA thing is wrong on several levels. The ability to join POPA is based on you paying the fee, not on rejection rate or tenure.
Moreover, the difficulty in firing an examiner has to do with whether they’re a probationary employee, NOT on their POPA membership. The probationary period use to be 2 years, but is now 1 year after the President changed it.
Regarding Examiner “X”, the 0% allowance sign and the mentality it represents are completely unprofessional and the examiner should be outed (if management hasn’t already read this blog and looked into it).
“I believe that someone wrote that Applicant is able to write valid claims from the outset, so apparently we should see few proper rejections of the independent claim (if you believe Applicant knows their field and their own invention’s proper place in the field). And then, Applicant won’t be picking a dependent claim at random to bring up into the independent claim after rejection, but will use their (now enhanced) knowledge of their own field to write a new, valid independent claim. Or so the theory goes…”
Hogwash on so many levels.
I believe that someone wrote that Applicant is able to write valid claims from the outset, so apparently we should see few proper rejections of the independent claim (if you believe Applicant knows their field and their own invention’s proper place in the field). And then, Applicant won’t be picking a dependent claim at random to bring up into the independent claim after rejection, but will use their (now enhanced) knowledge of their own field to write a new, valid independent claim. Or so the theory goes…
Even if the program is not still in place, the induced mindset is.
Witness: 6.
It just follows…
I haven’t read all the comments, so I may be redundant, but …
Under the previous Director, there was a “QC” progrom to reduce “false positive” allowances. If a junior Examiner were to be found to allow an unpatentable claim, there were severe consequences. The Examiner’s were afraid to present their allowable cases, so they rejected everything.
Could this scenario still be in place?
Based on my own detailed study of millions of patent applications, I believe it is misleading to conclude so casually that examiners are so clearly responsible for low allowance rates. Such a conclusion ignores the applicant’s role in the process. Let me explain. My data shows that the percentage of applications with an RCE in low allowance rate art units are most often remarkably LOW. The percentage of applications with two or more RCE’s is usually extremely low. Still further, the percentage of the low allowance cases with an appeal is also generally very low.
If your primary explanation of uneven / inconsistent application of patentability rules” were accurate, you would certainly not expect the RCE and appeal rates to be very low. In other words, my data shows applicants in low allowance art units giving up sooner rather than later. It is hard to blame the examiner for a low allowance rate when a huge number of applicant’s are giving up before RCE.
Here is my alternative theory on these low allowance art units…based on my own study of the data. I have looked carefully at the amount of time between filing and the first office action. I have also looked at the amount of time between RCE and the next substantive office action. I have also looked at the amount of time between the first office action and abandonment/allowance. The most shocking of all of these stats was the time from RCE to the next substantive office action. In some instances, this delay is averaging over TWO FULL YEARS.
The numbers make it fairly clear to me that a low allowance rate often has more to do with an a frustrated applicant giving up because it has taken to long to get a patent…than with an examiner’s “uneven / inconsistent application of patentability rules.”
The massive backlog of unexamined patent applications and unexamined RCE’s is NOT spread out evenly over the whole patent office. Instead, there is a massive clustering of unexamined applications/RCE’s in certain specific areas of the patent office (like art unit 3689). These areas are where the low allowance rates are most often found. Coincidence? I think not.
But do not take my word for it. We created an online service that enables you to see all of our data. Pick any examiner or art unit and enjoy reviewing our corresponding statistics. We offer free trial access (just click free trial button on main page). The site is: http://www.patentcore.com
“The information is readily available.”
No information about what patents might actually be in effect and/or even a reasonable approximation of their valid scope. Which is what you seem uncapable of understanding. You want to provide 0 information about that key factor. That’s the big reason we did away with registration in the past and you’re rearing and ready for a comeback!
“A patent that is not new disclosure gets overturned.”
AFTER you pay to have it pop up? Id iot. Je sus Ch rist you are du m sir.
“There is no such thing as disclosure”
I make disclosures all the time you ta rd, most more valuable than any disclosure you’ll ever personally have the opportunity to work on in your life. And I literally cannot get a patent. Obviously my disclosures might not be patent worthy either, but under your system that would hardly matter, I could just mob them with apps and claim whatever the f I felt like.
Listen I’m done talking to your du m a rse. If you wanna keep on, feel free.
“The patent office is NOT in the inNOvation business.”
Just fyi, it literally is when I say it is.
One of the inevitable issues is the fuzziness of the current standard of obviousness. The Fed. Cir. tried to make it predictable or at least rationalizable with the TSM standard. But then the Supremes said “NO! It must be fuzzy!”
Same here….Goes something like this:
Here you go. Enjoy!!! Talk about Luck/Unluck of the draw…
I don’t think that it will either be faster or that it would reduce the backlog.
A perfect example is the mindset of 6 who is on the anti-patent inNOvation club. If you only examine the independent claim and that claim is rejected, you are back at square one for the dependent claim which rises up to take the independent claim’s place. You are now worse off because you have wasted a cycle with nothing to show for it. And that’s even taking for argument’s sake that the rejection was proper and could not be overcome.
The value of examination is simply not worth the cost.
No.
“Yeah, but having the unfortunate side effect of bringing manufacturing to a stand still.”
This is completely unfounded conjecture. Nothing is brought to a standstill. The information is readily available.
“No, I most certainly do not. More patents is a horrendous thing. More disclosure is a good thing. A happy medium is a so so thing.”
This is completely incorrect. A patent that is not new disclosure gets overturned. There is no such thing as disclosure without the quid pro quo (beyond what disclosure you already have, thus outside of the constitutional mandate and not a part of our discussion). The fact that you think patents are a horrendous thing I dictate a very unhealthy bias to any patent system. The patent office is NOT in the inNOvation business.
Lulz that might be the case in some AU’s but I’ve seen docketing happen in my AU realtime. It goes something like this: Spe pulls up big ol spe docket with cases to hand out, grabs a big ol’ random group and away they go to the examiner’s docket.
You’re confusing RTU/FTO with patent landscaping, aren’t you?
“Search fee is not the same as the fee for an RCE. It is just a search fee. Quite a bit less. ”
So then you’d like a discount?
“Further, it is not an RCE and is not intended to disrupt prosecution the way Herr Direktor has done with placing RCEs at the end of the line.”
So then you’d like to not have to file an RCE to slip in your AF amend?
I’m just not seeing when you’re proposing you’d pay this extra search fee and have the extra search done as opposed to when you’d do it now with an RCE. I’m just not seeing it and I’m going to need to see it before I can convince Davi on it.
“Having a gargantuan “fleet” of applications at the ready will no doubt invigorate even more knowledge and sharing, thus fulfilling the constitutional mandate.”
Yeah, but having the unfortunate side effect of bringing manufacturing to a stand still.
“6, you do know that having MORE patents is a good thing, right?”
No, I most certainly do not. More patents is a horrendous thing. More disclosure is a good thing. A happy medium is a so so thing.
b) – yes get rid of the examination of the dependent claims. I bet applications would be examined faster and the backlog would be reduced.
Isn’t Google supposed to provide file histories for most applications? Can you get the data this way? I did check on a few applications a few months ago, and although Google indicates they are continually crawling the PTO, several file histories had not been updated….they were about a year and a half old. Just thought it might be worth a check.
Also, isn’t all of the data you require available for purchase from the PTO? I realize it might be expensive, to get file histories, but if you plan to offer this product commercially, it might be a good v2 update.
Hey Sibb, how’s it going? Hope all is well with you.
Yeah…I’ve actually requested the patent application information via FOIA about 5 times now. Each time I get rejected. It is extremely frustrating, since this data is essential to clear up the “denominator” problems.
Search fee is not the same as the fee for an RCE. It is just a search fee. Quite a bit less. Further, it is not an RCE and is not intended to disrupt prosecution the way Herr Direktor has done with placing RCEs at the end of the line.
“what do you think it’ll cost?‘
100k. TOPS (I wasn’t going to stress this, but since you are being a pr1ck, even that is way too high).
You are doing it wrong otherwise.
Or maybe your resistance comes from the clear vested interest you have in maintaining such ridiculous work.
I wonder if you could get the PTO to give you the full data under the Freedom of Information Act? If you just got the number of abandonments for each examiner during the time period, you could use (allowances / [allowances + abandonments]) as a measure of where the examiner is on the allow/reject spectrum and it would inherently normalize for expectancy, grade level, and production/overtime.
Thanks for writing this paper, it is very enlightening.
Oh I hope you’re correct about that. I’ve never understood why, after turning back a 102 rejection without claim amendments on a first action, and then after turning back a 103 rejection without claim amendments on a second non-final action, I then have to face a third non-final action with the same 103 rejection just with a different secondary reference. If an examiner can’t, in two attempts, make a valid rejection, it seems a waste of resources to keep flogging it. I seem to prosecute a few cases per year that follow this pattern. Clients should be happy that their claims withstood a withering assault of irrelevant prior art, but they just see the cost of their patent filings double or triple for no apparent good reason.
So you’ve never done a landscape, AND you can’t read?
I said NOW they cost in the neighborhood of 100k. IF we also have to determine validity of 100’s or thousands of unexamined publications, what do you think it’ll cost?
Are you still in school, or are you an techdirt engineer with no patent experience?