The PTO recently posted a beta version of a new web page.

I haven't had a whole lot of time to peruse it, but I've gotta say, it seems to be quite an improvement over the current one, which is little more than a list of disorganized links. Not perfect, but certainly much improved.

You can go here to submit feedback and suggestions for the new website.

Q. Todd Dickenson, the once and (perhaps) future Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, participated in a panel discussion titled "A Model Patent Office for the Future -- Promoting and Protecting Investments in Innovation" at the BIO International Convention.


Q. Todd was giving his thoughts on some of the most pressing problems at the PTO, and his view on how they might be best addressed. His comments come across as pretty much the next best thing to a candidate's stump speech.

I must say, I liked what I heard (or at least what the coverage says I would have heard had I been there).


He proposed a number of reforms at the Office, including "changes in Office leadership, the count system, examination time allotments and examiner pay, enhanced worksharing, an end to fee diversion, and deferred examination".

Also prominently mentioned was the fact that "rulemaking transparency and attempts to engage stakeholders in the process would be critical to the success of any future rulemaking". He also addressed the subjects of fee diversion and deferred examination. Music to my ears.

[Not that the proposed rules defining limits to continuations and claims, as wrong-headed as they were, didn't have any benefits; I've been seeing a whole lot of applications with 3 independent/20 total claims lately. A nice break from the number of claims I'd grown used to seeing.]


He also made the points that "the count system, by which the Office measures examiner (and supervisor) performance, was in need of an update", and that "the amount of time allotted for examination, which he said ranged from 18-36 hours per application, was also in need of an update".

These changes would certainly not be cheap to implement, but are well worth some serious consideration.


You can read the details at PatentDocs.

Gene Quinn at IPWatchdog has posted about examiners being given direction to 'allow more applications'.

This is presumably related to the initiatives that Acting Commissioner for Patents Peggy Focarino spoke with him about a couple of weeks ago regarding the Office's recent initiatives (such as by making better use of interviews) to identify patentable subject matter earlier in prosecution (which has always been part of an examiners' training, but which they apparently needed to be reminded of).

Apparently, the PTO is not the only federal IP agency that is running a large backlog.

The Washington Post ran a story today detailing the accumulation of a large backlog in processing copyright applications at the U.S. Copyright Office.

I found the article interesting in that the copyright backlog is apparently the result of a poorly executed move to a new electronic filing system. The situation is reminiscent of the Office's move to East/West from the old APS search engine. In both cases, the existing system was taken off line before the new system could handle the demands required of it.

East and West work much better today; presumably the Copyright Office's new electronic submissions system will be fixed as well, but it will presumably be a while before that backlog can be worked off.

It would seem to be self evident that ensuring the high quality of issued patents is of benefit to everybody.

The Office has a number of mechanisms in place to ensure the high quality of patents. Among them are the Office of Patent Quality Assurance (OPQA), and the second pair of eyes review.

To the examining corps (or at least to me), the details of how these programs work are not completely clear. I've never seen any official documentation of how the programs work, and after spending about 20 minutes one evening last week [again; this is not the first time I've tried to do this], I've given up trying to find any concrete information on the USPTO website about how the programs work.

In general, the programs both perform a review of an examiner's action. If they find a problem, the action is returned to the examiner so that whatever problems were identified can be fixed.


One commonly held (but mistaken) belief about the programs is that an examiner's allowance can be indiscriminately returned with the vague guidance that the claims are not allowable, and a new rejection must be prepared.

The fact of the matter is that if an allowance is returned (and I can attest to this, because I have first-hand knowledge), the reviewer attaches prior art that they believe is sufficient to reject the claims. Even when this happens, if the examiner believes that the reviewer is mistaken, they can make their case to their SPE and OPQA. It's a pain to have to do, and you're not getting any other time to do this, but if you think it is warranted, you can in effect tell the reviewer to 'get stuffed'. (Of course, you need to be able to convince your supervisors that you are correct.)


Another commonly held perception is that the Office's QA programs stress reviews of allowances, and rarely review rejections. Since to my [minimal] knowledge, OPQA reviews only a few rejections, and second pair of eyes reviews only allowances and no rejections, this does appear to currently be the case. I've read speculation that this has contributed to examiners' reluctance to allow applications, since the allowance are subject to review, while rejections aren't (or are much less likely to).


The rationale for stressing the review of allowances over rejections may well be the belief that a bad rejection can always be fixed later in prosecution, while a bad allowance cannot. More to the point, a bad allowance has the potential to embarrass the Office. [There is a reason why examiners are told to make sure they don't 'make the papers' based on their allowed cases...]

Of course, in reality, poor quality rejections are just as bad as poor quality allowances; they cost the inventors time and money, and contribute to the Office's backlog.

Besides, bad allowances can always be reexamined. The money spent and time lost by inventors on bad rejections can never be recouped (particularly when the patent never issues).


Gene Quinn, over at IPWatchdog recently wrote about the Office's QA procedures, and a rumor he'd heard regarding some upcoming (and encouraging, if true) changes that may be coming down the pike.

Apparently, or so the rumor says, the Office will be placing more of a focus on using OPQA to increase the quality of Office actions preemptively (i.e., through training), and less emphasis on doing it after the fact (by returning completed actions to the examiner for correction). The original post can be found here.

I found the comments made by 'OPQA Person', who offers a bit of insight into the process followed by OPQA examiners, to be especially enlightening.


Well, Gene followed up after being contacted by the Office and conducting an interview with Peggy Focarino, Acting Commissioner for Patents, regarding the future direction of quality review activities at the Office.

The changes and initiatives discussed offer many reasons for optimism.


Clearly, if an examiner has done their job correctly, there should be no reluctance to allow applications when appropriate. Still, it's no fun to feel like someone is constantly looking over your shoulder, ready to question your decisions, particularly when you've got signatory authority. The new approach sounds like it could go a long way toward alleviating that feeling amongst the corps.

Back when I was in PEIT (the examiners' initial training before the Patent Academy was established), a guest speaker came in to speak about, well, I don't really remember. About working at the PTO in general maybe. One of the points he made still sticks with me. He said that the best job in the entire Office is that of primary examiner. A primary examiner is "his or her own patent office." They have autonomy to make their own decisions regarding patentability without constant being second-guessed.

I agree that the job of primary examiner is still the best one in the Office, but the autonomy hasn't been as great lately as it once was. But who knows, maybe the pendulum is swinging back.

A couple of weeks ago, the Corps received some more info on the State of the Office, and how the current economic problems are impacting us.

Some highlights:

At the current rate of patent filings, the Office will end the year down 2% from FY 2008 levels. Not good, since the Office budgeted based on an assumption that filings would rise by 5%.

Overall, patent fees as a whole (filing fees, maintenance fees, extensions of time, etc.) are projected to fall approximately $100 million short of the budgeted amount.

Based on the Office's feedback from U.S. filers and international offices, the fall in filings and fee collections will likely accelerate.

Trademark filings are down by 13% in FY 2009, but given the current budget surplus in the Trademark budget, this is less of a concern (although a continuation of this trend into FY 2010 would be a problem).


The actions the Office has taken:

Patent hiring has been suspended, although outstanding offers are being honored. Agency-wide, only critical positions are being filled.

"Many non-negotiated awards have been curtailed or suspended and will be reevaluated s the year progresses." I assume that this generally shouldn't affect examiners given the work of POPA.

"All non-production, non-revenue generating overtime has been suspended. Overtime that is revenue producing has been limited." Overtime in TCs 1600, 1700, 2800, 2900, 3600, 3700, and 4100 will be limited to 10 hours per biweek. Overtime in TCs 2100, 2400 and 2600 (which have the larger backlogs) will be limited to 32 hours per biweek.

Starting on Sunday, April 12th, 2009, HVAC services will not be provided on Sundays throughout campus. Previously, HVAC was provided in the Randolph, Remsen, Knox and Jefferson buildings on Sundays, where the bulk of the examiners have their offices.

Funding for Travel, Training, Office Supplies, Contracts and Events have all been curtailed.

Funding for the Legal and Technical Studies program (Law School) has been suspended, as of March 16th.

Funding for the After Work Education Program has been suspended as of March 20th.



No big surprises, really. It will be interesting (well, that's one word for it) to see where this leads. Given the current state of the Office's backlog, I really have to wonder if RIFs are a realistic option.

I also have to wonder if the downward trend in filings might make people/companies take a step back and reevaluate their patenting strategies (which in the past seems to have been 'patent everything'), even after the economic situation improves.

Another casualty of the economy. The examining corps received an email today that the Non-Duty Hours Legal Studies Program has been suspended, effective March 16th. This is the program that pays the tuition for examiners to attend law school.

The program has been suspended in the past, and it is no doubt a serious problem for examiners already deep into law school when it happens. Eventually the economy will improve, as it did the last time, and the program will be reinstated.

Still, that's not much consolation to somebody currently facing the prospect of figuring out how to pay for their next semester of law school, a semester for which the PTO had been counted on to pay.

I like books. So much so that I am only very rarely let loose in a bookstore by myself. Otherwise, I will find a book or three that I simply must buy. And truthfully, I've got too many books in my house as it is.

Worse yet is when I travel to a city having one of those great massive bookstores. I invariably end up spending the better part of an entire day perusing the bookshelves. The Strand in NYC and Powell's in Portland leap to mind.


Much as I like them, though, books tend to make lousy prior art.


This is not to say that there's not likely some good prior art out there in book form. The hard-copy paper-and-binding medium, though, presents some serious problems for examiners that prevents their widespread use as prior art.

The biggest problem is identifying useful prior art in books in the first place. Since they're not in electronic form, there's obviously no way to perform an automated search on them. An examiner has to first have a strong suspicion that there's something useful in a particular book before they're going to seek it out. Usually this happens when the book has been cited in other relevant prior art.

The examiner then has to find out if the library has got a copy of the book. If not, they can file a request for an inter-library loan (which generally takes about a week or so).

Once (and if) they manage to get a copy of the book (I usually have been able to, but not always), the examiner then needs to read the thing, or at least skim it well enough to determine if it is useful as prior art.

Then, if it is useful, the examiner has to take the time to photocopy the relevant parts of the book, or sometimes the entire thing. (I'm sure somebody has worked out all that silly copyright stuff, right? I've often wondered...) This is truly mind-numbing work, believe me. I've gotten pretty good at doing it efficiently, but a few hundred pages will still take well over an hour.

Before the advent of electronic Office actions, the examiner would be done at this point, but today they need to take the additional step of scanning the photocopied book to create a pdf version that can be submitted with the electronic Office action.

Since examiners are given a limited amount of time to perform their examination, taking the extra time to pursue prior art in book form is not a very attractive option. This is one reason why attorneys might not see books used as prior art all that often.


So when I read stories in the press about Google wanting to digitize every book ever printed, I'm tempted to say more power to them. Of course, digitizing books would introduce a whole new category of prior art that can be easily searchable, resulting in more prior art that needs to be considered, so it would certainly present a mixed blessing.

Patent Debate, which was a service of ip.com, has apparently met its demise.

It allowed anyone to comment on published applications. The idea was to allow people to offer opinions as to the patentability of a pending application.

I thought it was a great idea when it first came out, but it was really under-utilized, and that's too bad.

On February 10th, the USPTO will host two virtual booths at the CareerBuilder.com Engineering Virtual Career Fair online, from 9AM to 8PM EST. Candidates can visit the USPTO virtual "Entry Level" or "Electrical Engineering" booth to learn about the USPTO and obtain key agency information such as patent examiner vacancy announcements, employee benefits, and incentives. Candidates may also participate in live chat sessions with recruiters to obtain more detailed information about patent examiner job opportunities.

Click Here to register to participate in the Virtual Career Fair.

For more information, contact Patricia Mendoza in the Office of Human Resources at (571) 272-2813.