Just a Patent Examiner

New USPTO Web Page

2009-06-12T02:46:05Z

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 Speaks!

2009-05-27T02:37:22Z

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.

Allow more?

2009-05-26T03:27:48Z

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).

Got Backlog?

2009-05-20T03:17:16Z

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.

OPQA

2009-05-15T04:01:00Z

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.

More News From Management

2009-04-30T02:56:33Z

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.

Legal Studies Program Suspended

2009-03-24T02:43:43Z

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.

Books as Prior Art

2009-03-13T03:09:47Z

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 - RIP (apparently)

2009-03-06T02:40:22Z

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.

USPTO Participating in Virtual Job Fair

2009-02-03T03:18:48Z

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.

Duty to Disclose (and Duty of Inquiry)

2008-12-03T03:10:24Z

Dennis at Patently-O recently wrote a post about the applicant's duty of inquiry. This means that an applicant is obliged to actually read the references that they decide are relevant enough to submit in an Information Disclosure Statement.

I can't disagree with this; if I have to read it, you should have to read it; this seems only fair to me. Plus, how is the attorney to know that the reference is material to patentability if they haven't read it? (Except perhaps for those cases where the reference has been cited by the examiner during prosecution of a closely related application.)

Anything that would help to ensure that the references submitted with an IDS really were relevant would be a great help to examiners. The trend today seems to be towards more and more extensive IDSs, usually with less and less relevant art cited. It's not uncommon now to receive an IDS with nothing but copies of Office actions from related applications. All well and good, but most of the time those applications are only very peripherally related, and so the Office actions cited are not at all relevant, and a waste of time.

Can't really blame the attorneys, though; they're just following the guidance of the courts, and the courts seem to be continuously expanding the boundaries of what might constitute 'material to patentability'. The result (to my experience) is that examiners are getting more IDSs citing more references that are, on average, less relevant.

So, what do you do when faced with one of those monster IDSs citing hundreds of references, some of which might be hundreds or thousands of pages long? It takes a long time to consider all of those references, of course.

Well, the MPEP seems to be pretty unequivocal on the subject.

"An information disclosure statement filed in accordance with the provisions of 37 CFR 1.97 and 37 CFR 1.98 will be considered by the examiner assigned to the application." -- MPEP 609

"The information contained in information disclosure statements which comply with both the content requirements of 37 CFR 1.98 and the requirements, based on the time of filing the statement, of 37 CFR 1.97 will be considered by the examiner. Consideration by the examiner of the information submitted in an IDS means that the examiner will consider the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search." -- MPEP 609.05(b)

OK, but what exactly constitutes the 'same manner as other documents in Office search files'?

Usually, if I've performed a search, then I can at least go straight to the places in the documents that contain the search terms and get a good idea of the relevance of the reference. I can also perform a text search for other terms of interest if I think it's warranted.

With an IDS, all I've got is a document image (so no text searching) that the applicant has told me is material to the patentability of their application, but with no clue as to why. I can't consider it in the same way as other documents in the search files, because I have no way of knowing why it's relevant without reading it, at least in part. When there are hundreds of references, or references that are very large, this can be a problem. I'm not sure how an examiner is supposed to handle one of those mega-IDSs and consider all of the cited references "in the same manner as other documents in Office search files are considered" while maintaining their production numbers.

Others in the patent field don't seem to expect examiners to review the references in great detail. When the courts are handing down inequitable conduct decisions for burying references in a large IDS, obviously somebody doesn't think examiners will fully consider all of the references cited in large IDSs.

Now if the courts really wanted to help examiners out, it would be great if they would hand down some decisions more clearly [i.e., narrowly] defining what's actually 'material to patentability', instead of continuously expanding that definition, and thereby ~~encouraging~~ requiring attorneys to submit larger and larger [but less and less relevant] IDSs.

I'm not holding my breath.

USPTO Resumes Onsite Patent Examiner Interviews and Holds Job Fair

2008-11-04T01:55:16Z

The USPTO resumed onsite weekly interview sessions last week at the Alexandria campus on Tuesdays and Thursdays until March 16th, 2009.

The USPTO's goal is to attract qualified applicants who have a bachelors or advanced degree in computer engineering, electrical engineering, mechanical engineering, chemical engineering, biomedical engineering, computer science, pharmacology, chemistry and physics. Applicants must also possess effective oral and written communication skills with the ability to succeed in a production environment.

Additionally, the USPTO will host a regional job fair in New York, NY at The City College of New York on November 7th and 8th.

To schedule an interview for these events, interested applicants must register here.

A Lack of Definiteness

2008-10-03T21:20:56Z

Do you think that too many patents issue with claims that are not sufficiently clear?

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Well, the CAFC seems to think so; in January of this year, in the Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1663 (Fed. Cir. 2008) decision, they said:

"When a claim limitation is defined in purely functional terms, the task of determining whether that limitation is sufficiently definite is a difficult one that is highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the relevant art area). We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation."

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The PTO might think so, too. They issued a couple of memos to examiners on September 2nd in response to the CAFC decision.

[I assume that these memos are on the USPTO web site, but I couldn't find them.]

The memos are "a clarification regarding indefiniteness rejections under 35 U.S.C. 112 second paragraph". They are designed to "remind the examining corps of the appropriate use of indefiniteness rejections under 35 U.S.C. 112, second paragraph", both in general and when examining means-plus-function claims.

They address, among other things, rejections when a claim term lacks a clear and precise definition, and when a claim limitation lacks proper antecedent basis.

The memos really only restate the MPEP's guidance on 112 second, but they do indeed serve as reminders to examiners of the importance of making sure claims are sufficiently definite.

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James Bessen and Michael J. Meurer also think too many indefinite patents are issued. In their book, Patent Failure, they argue that the root of the current problems with the patent system can be traced to a lack of notice, and that in particular the very nature of software and business method patents makes them inherently less definite, relative to other types of patents.

The notice function, of course, is supposed to inform the public as to the scope of patent protection. It ideally allows the public to discern the boundaries of what has been patented, so that they can avoid infringing, in the same way that a fence allows one to discern the boundaries of private property and so can easily avoid trespassing. The authors' point is that it is the lack of those clear boundaries of intellectual property that causes problems.

A bit of their analysis:

Features that affect the notice function of patents include:

Fuzzy or unpredictable boundaries (because there is no reliable way of determining patent boundaries short of litigation).
Public access to boundary information (because it is possible for patent owners to hide the claim language that defines patent boundaries from public view for many years).
Possession and the scope of rights (because courts sometimes grant patent owners rights to technology that is new, different, and distant from anything they actually made or possessed).
The patent flood (because investments in new technology often need to be checked against many patents - even thousands, in the case of e-commerce).

So, what can be done about it? They suggest (among other things):

Reform the process of generating claims and litigating infringement by having the CAFC show more deference to the claim construction of the USPTO and the district courts.
Implement a single specialized federal trial court to handle all patent lawsuits.
Have examiners ask for more information about the meaning of claims and reject vague and abstract claims more aggressively.
Allow the USPTO to offer opinion letters addressing whether a particular technology infringes a U.S. Patent, and have the courts give those opinion letters some deference.
Require the USPTO to not only make pre-grant publication mandatory, but to require publication of every new or amended claim in every patent.
Treat software as an "unpredictable" technology, thus limiting claims more closely to the technology actually disclosed.
[This, of course, leaves aside the problem of setting guidelines for what constitutes a 'software patent'.]
Increase filing and renewal fees to decrease the number of patent applications filed and maintained in force.
Strengthen obviousness standards.
Reform patent law by simply excusing good-faith infringers, or expand the current prior-user defense to cover all computer and electronics inventions.

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The authors really do make some pretty compelling arguments, at least to somebody with some one-sided knowledge of patent prosecution, but pretty much no first hand knowledge of patent litigation. I'm kind of surprised that I haven't seen more buzz about this book, but maybe I haven't been looking in the right places, and admittedly, I had this book sitting on my bookshelf for a few months before I got around to reading it.

I can appreciate their arguments regarding the difficulties of interpreting claim scope. It is not uncommon to examine applications that are written in a way that requires a fair bit of deciphering in order to get a good understanding of what the inventor is trying to patent.

And that's just the American inventors; foreign inventors are often far worse, because of the common practice of running a machine translation on a foreign language specification and submitting it to the Office as is. I hate picking up a new application which claims foreign priority, because I know that there is a good chance that I'm going to have to spend an inordinate amount of time just to figure out what the heck is going on.

In a perfect world, all the specifications would be crystal clear, and all the claims definite and enabled (and patentable, of course; lots of counts that way).

In our world, though, well, there is always the 112 rejection...

The 'Wearing Down Examiners' Fallacy

2008-08-20T02:36:49Z

Even before the Continuation Rule Changes were promulgated, the subject of continuation reform has been a fairly hot topic. The high (or low) water mark was arguably this Lemley & Moore Paper; it is one of the most highly-cited papers on the subject.

One of the issues often cited in discussions of continuation reform is the so-called 'wearing down of examiners'. The theory is that by taking advantage of (or abusing) the unlimited continuations available to applicants, they can wring an undeserved allowance from an examiner simply by refusing to abandon the application.

The latest incarnation of this argument is in the June 2008 edition of the JPTOS, in an article (this is a link to an abstract only) by James W. Beard, a JD candidate at the University of California. Here's what the article has to say, although it's nothing that we haven't heard before:

"The danger posed by repeated continuation application lies in the nature of the incentive structure at the USPTO. Examiners are only rewarded for the initial response to a patent application and for finally disposing of an application, and get no additional incentive processing "a patent that cites 150 pieces of prior art and has 120 claims than a patent that cites two pieces of prior art and has three claims." [Comments by Mark Lemley at the Symposium, "Ideas Into Action: Implementing Reform of the Patent System", 19 Berkeley Tech L.J. 1053, 1112.] Disposing of an application requires granting a patent, and because an applicant can continually refile amended claims and continuation applications in response to an examiner's rejection or criticism, this creates a weakness in the process. Examiners have no incentive to spend additional time on more difficult applications; by the time it is on their desk they have already been rewarded for taking the case, and the only means to get it off their desk is to grant it. Therefore, if an applicant were sufficiently stubborn in filing continuation applications, the examiner's incentive would be to both spend less time on each successive continuation application and, finally, to grant the application even if the claims were overly broad. Effectively, the current incentive structure of the USPTO leads to a tendency to give decreased vigilance to successive applications. In sum, this allows a determined applicant to obtain a patent monopoly on something that would otherwise be unpatentable, resulting in significant costs to future inventors and potential infringers."

But wait, there's more...

"The proposed rule limiting applicants to two continuation applications and one request for continuing examination would have mitigated the most serious instances of applicants repeatedly filing continuation applications to wear down examiners, but it does not completely eliminate the issue. Somewhat counter-intuitively, there is almost no reduction in examination time for applications containing continuations relative to those unamended. [Stuart Weinberg, Inventor Sues U.S. Patent Office Over New Rules, Dow Jones Newswire, Aug. 23, 2007] There is therefore no incentive, in terms of efficiency, to having the same examiner prosecute each filing."

The author then goes on to posit that since there is no increased efficiency in having the same examiner assigned continuations, then having them assigned randomly might help with this whole 'wearing down examiners' thing.

Of course, it's all bull, and anyone who knows anything about how the count system actually works knows it. So let's look at a few of the author's points.

"Examiners are only rewarded for the initial response to a patent application and for finally disposing of an application..."

Wrong. Every time an applicant files an RCE (or a straight continuation), the examiner receives a count for the express abandonment, and another count for the first action after RCE. If they are doing their job right, the examiner will get a count for every single action they write (excluding advisory actions), the abandonment count acting as a 'deferred' count for the final rejection.

"[Examiners] get no additional incentive processing a patent that cites 150 pieces of prior art and has 120 claims than a patent that cites two pieces of prior art and has three claims."

Well, no argument there, but this doesn't really have anything to do with 'wearing down examiners' with excessive continuations. Different issue altogether.

"Disposing of an application requires granting a patent..."

Wrong. Abandonment and appeal will also dispose of an application.

"...by the time it is on their desk they have already been rewarded for taking the case, and the only means to get it off their desk is to grant it."

Wrong. I have to assume that by 'off their desk' the author actually means 'off their docket'. Well, yes, the only way that I can take unilateral action to get an application off my docket is to allow it. All of the other ways for applications to leave my docket [abandonment or appeal] are at the sole discretion of the applicant. Even so, as discussed above, there is nothing that I do that I will not get 'rewarded' for, assuming that I'm making good rejections that do not necessitate writing second non-finals.

"...if an applicant were sufficiently stubborn in filing continuation applications, the examiner's incentive would be to both spend less time on each successive continuation application and, finally, to grant the application even if the claims were overly broad."

Believe me, working under the requirements of the current production system, the examiner's incentive is always to spend as little time on an application as possible. Nonetheless, taking the time to find the best art up front and make a good first action is fully consistent with that goal, since that will minimize the time spent on subsequent actions, and will tend to shorten prosecution history by getting the issues focused sooner.

"Somewhat counter-intuitively, there is almost no reduction in examination time for applications containing continuations relative to those unamended...There is therefore no incentive, in terms of efficiency, to having the same examiner prosecute each filing."

Uh, yeah. Unfortunately, I couldn't find a copy of the original Dow Jones Newswire article, but I'm curious as to whether Mr. Weinberg spoke to any examiners before he made this assertion.

Speaking for myself, examining a continuation really does give me a serious head start. Usually, I'll have a good enough recollection of the parent application that it is much more efficient to work the child application. Even if it's been long enough that I don't recall the parent very well, a quick perusal of the file wrapper of the parent will bring me up to speed in no time at all.

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I'm certainly not saying that having a discussion over current continuation practice is not a worthwhile exercise. Given the current backlog problems, it's probably something that should be looked at. But really, the debate should be limited to facts, and the tired old 'wearing down examiners' argument is pure fiction (to my experience).

Yet, like a bad penny, this argument has been used again and again in scholarly papers as evidence of the need for continuation reform. (It is somewhat reminiscent of that 97% allowance rate figure that Quillen and Webster came up with in 2002; the figure has been thoroughly debunked [even by the original authors!] yet the figure keeps rearing its head as evidence of the abuse of continuations.)

That particular fiction is especially problematic, though, and I would say detracts from the productiveness of the debate, because to those who have no real knowledge of how the count system works, it sounds very convincing.

But it's simply not true.

'The Most Important Part of the Process'

2008-08-08T04:27:51Z

An anonymous comment was posted that included a few points that I felt were worth discussing.

"The search is the most important part of the process..."

I think that you might have a hard time finding anyone to disagree with this statement. When the examiner finds good art, the rest of the examination could almost take care of itself. (Not quite, but almost.) Good art is certainly a prerequisite to an efficient examination.

"...but the powers-that-be would rather offload that to the applicant."

I've seen the ESDs that are submitted with some of the Accelerated Examination cases, and I've spoken with examiners who have examined them. I personally wouldn't accept the art submitted as the best art; I'd still perform my own search. Hopefully the ESD would give me some clues as to the best places to direct my search, so at least it would still hopefully save me some time, though.

"...either Examiners work to become true experts in the art, or we're better off with a registration system..."

This is a good plan. But there are problems that stand in the way of making it happen.

First, after an examiner has built up a substantial docket, the constant flow of RCEs will make it possible (or more accurately, necessary) for the examiner to pick up fewer new cases to examine, because they need to spend most of their time working on amendments. The fewer new applications taken up for examination, the less opportunity to study an area of the art with which they are not familiar.

Second, there are many art areas that are broad enough that it is virtually impossible for examiners to gain expertise in all of the art that they might potentially examine (because they just don't see applications from all areas of their art). I often find myself spending a substantial part of my initial search finding and reading background information so I can get a good understanding of the invention and the related art. I honestly don't know how the examiners in the Business Methods arts do it. That area is seemingly so wide ranging that I imagine they need to do that almost every time they pick up a new application.

I completely agree that a good initial search is central to good examination, but it's tough to do when you've got only a very few hours in which to do it. For me, it's worth spending the extra time on the first action because of the time it saves me in answering the amendments. It saves me from writing many second non-final actions (which is definitely a contrast with my first few years examining).

The thing is, it invariably (from what I've seen) takes some hard experience and some time invested writing second and third non-finals and withdrawing finality for an examiner to figure this out. This will only happen if attorneys at least occasionally force examiners to do it, instead of filing an automatic RCE even when the art is not as good as it should be.

(And this is not a criticism of the way attorneys prosecute their clients' applications, really. It's simply one of the reasons why things are the way they are.)

So what is one to do? One solution would be to give examiners more time for their first actions.

Another possible solution? How about further subdividing the art that examiners handle? In order to make them true experts, it might be helpful to allow examiners to examine a much more narrow area of art than they do today (in some areas of art, anyway).

Self Motivation and Quality

2008-06-17T01:52:04Z

It's nice to make a difference.

In general, if you know that the job that you do is important and makes a real difference, I would think that would make it easier to be self motivated to do the best job possible.

Back when new examiners at the Office went through only a two-week training course (Patent Examiner Initial Training) before being set loose to examine new applications, there really wasn't much, if any, time devoted to instilling in examiners an appreciation for the importance of the job they were going to be doing (to my recollection, anyway).

It took me a long time to really gain a full appreciation for the impact that the job patent examiner makes on businesses, inventors and the economy in general. As I came to that realization, I wanted to do a better and better job of examination (within, of course, the production requirements that the Office imposes).

I've always had the impression that many examiners see patent examining as just another job. This really was very understandable, given that two weeks worth of training, especially when so many new examiners are straight out of school. I doubt that many new examiners have spent their time as patent-junkies before coming to the Office.

But patent examination isn't just another job, and it's important that it doesn't get treated like one.

For a long time, I never noticed any significant effort made on the part of the Office to help examiners to gain that appreciation for the impact that their job has, but that as definitely changed over the last few years.

The Office now puts their new examiners through 8 months of initial training, and although I don't have any firsthand knowledge of the exact curriculum being taught, I assume that there's some time devoted to giving the students an appreciation for the importance and impact the the job has on society.

The Patent and Trademark Office Society has begun organizing trips to the courthouse (even the Supreme Court for KSR!) to attend hearings on important patent cases.

The Office has also started putting links to stories in the media about the PTO and patent issues into the weekly newsletter. The introduction:

"Welcome to "USPTO in the news", where you'll find the five major news stories from the previous week covering important news about our office, patents, trademarks, copyrights, and IP policy and enforcement. Please take a moment to read these stories -- you'll gain a greater understanding of the issues affecting the USPTO and become better informed about what the media and our stakeholders are saying about the USPTO."

In a recent issue, they linked to the following stories:

Managing Intellectual Property
"Federal Circuit seeks new patentability test in Bilski" - May 12, 2008

Information Week
"Patent Office Hosts Toy Design Competition for Students" - May 13, 2008

San Jose Mercury
"Get moving on patent reform measure stalled in Senate" - May 11, 2008

Intellectual Property Watch
Bush Administration Pushes On For Patent Reform Bill This Year" - May 16, 2008

Intellectual Property Watch
"Francis Gurry Of Australia Wins Election To Be Next WIPO Director General" - May 13, 2008

'The Weekly' has even posted their own story regarding the possible impact that the Bilski case might have. The introductory paragraph:

"Recently, the media has focused on the pending In re Bilski case in the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., which is an appeal from a decision by the United States Patent and Trademark Office USPTO). After a full-court hearing on May 8, many reporters and bloggers have speculated that this case will lead to the end of business method patents. To help USPTO Weekly readers get a better understanding about the Bilski appeal, the Weekly investigated the case."

The entire text of this story can be found at The Patent Prospector.

Self-motivation can go a long way to ensuring quality patent examination, and knowing you are doing something that matters goes a long way to getting one self-motivated. After all, everybody wants to feel like they make a difference.

USPTO Job Fair

2008-06-04T01:47:31Z

The USPTO will host an on-site job fair from 9 a.m. to 3 p.m. on Saturday, June 14th, in the Madison Building Auditorium to recruit patent examiners for fiscal year 2008.

The USPTO's goal is to attract qualified applicants who have a bachelors or advanced degree in computer engineering, electrical engineering, mechanical engineering, biomedical engineering, chemical engineering, chemistry and physics. Applicants must also possess effective oral and written communication skills with the ability to succeed in a production environment.

Additionally, listed below is the schedule of upcoming regional job fairs:

June 6-7, Detroit, MI

June 13-14, Cleveland, OH

June 27-28, Durham, NC

To schedule an interview, interested applicants must register at www.usptocareers.gov/jobfair.

Trolls?

2008-05-28T03:09:36Z

I've noticed a few stories over the last few months about what some might call 'trolls'. Basically, stories about people who seem to be trying to abuse the intellectual property system.

Doubtless there are many other stories like these running around the net.

I thought the stories made for some interesting reading.

http://www.reallivepreacher.com/node/186

http://www.audioholics.com/news/industry-news/blue-jeans-strikes-back

http://accrispin.blogspot.com/2008/03/victoria-strauss-copyright-scam-us.html

Patent Examining Means Never Having to Say You're Sorry

2008-05-24T02:46:51Z

Nobody likes to make a mistake, for reasons that are fairly obvious.

When you're an examiner, making a mistake will usually cost you time, and probably counts. It also generally costs the applicant time and money.

When I first began examining, and found that I had made a mistake in an action, my first inclination was to apologize for it in the subsequent action.

Being new, though, I had no idea whether such a thing was appropriate, or a good idea.

So I asked around, and the general consensus was that you didn't want to apologize for a mistake in an action ['on the record'], because all that would do is call attention to the fact that you screwed something up. Better to just fix the mistake and leave it at that.

There were still times that I really thought that I should apologize, but I continued to follow the guidance I'd received as a new examiner.

There eventually did come a time (after I got partial signatory authority) that I decided that there really were mistakes for which the attorney (or more importantly, the applicant) deserved an apology. These days when that happens, I give one to them.

Most of those mistakes are fairly innocuous, like forgetting to include the initialed 1449 from an IDS with an action (although IDSs are getting tracked more closely these days, so it is harder for that to happen).

Mistakes can be more serious, though. There is one instance that I particularly remember. Without going into the details, I made a mistake that gave the attorney the impression that I was willing to allow a group of claims when that wasn't actually the case. When the amendment came back, the attorney had placed the claims in what they clearly expected to be condition for allowance.

While I was reviewing the amendment, I discovered my mistake.

I felt bad about it, but I didn't have any choice as to handling this situation. It's not like I could allow claims that were clearly (to me) non-patentable. I fixed the mistake, wrote up another rejection and mailed it out.

And I included an apology in the action.

There are other instances where I really would like to apologize, but I don't, because I don't think one is really warranted. One example of this is when I am doing a follow-up search and come across a really good piece of art that I think I should probably have found the first time around. But searching is a subjective art, and you're not always going to find the best art the first time around. Sometimes upon reflection you think of a searching strategy that hadn't occurred to you before. It happens.

Another instance where I get the urge to issue an apology has to do with 101 rejections. For a while, the guidance that we were receiving on the interpretation of 101 was, um, evolving.

I'd send out a 101 rejection, and by the time the amendment came back, the Office's position on 101 interpretation had changed. "Thanks for making those changes for me, but things have changed and now you'll have to do these other things to satisfy the requirements for statutory subject matter." Once again, I feel bad about it, but in this case I'm just following the guidance of the Office, who is just following the guidance of the courts (and I'm getting stuck writing a second non-final for it). It feels like I should include an apology with the action, but under those circumstances I don't think it's called for.

Luckily, 101 has settled down for the time being, so I'm not put in that position very often these days (although with the cases that are currently working their way through the courts, it's possible that will change again soon).

I can't ever remember seeing anything resembling an apology in correspondence from attorneys. That could be because all of the attorneys I deal with are true professionals and don't make mistakes.

It could also be that when an attorney makes a mistake, they probably owe that apology to their client, not to me.

In any event, it's not uncommon to see an applicant change attorneys over the course of prosecution, so certainly mistakes do get made. It only makes sense; nobody out there is perfect.

Another Place to Search

2008-05-01T03:16:58Z

IP Australia and the Australian government have launched a new open, online database featuring almost 20 years' worth of the country's patent application records.

The Story

The Website

While it's always great to have additional sources to search, I don't see myself using it very often (except in those cases where I'm looking for a specific Australian patent document and am having problems finding it through IP Australia), because it simply takes too long to routinely perform yet another search on another database and to analyze the results of that search. In order for it to be truly useful as a searching resource to me, it would ideally be incorporated into EAST along with the EPO, JPO and Derwent documents that are already there.

Still, more is better, right? Well, I suppose so.

Changes in USPTO Employment Application Process

2008-04-03T23:53:45Z

The process for submitting an employment application with the Office now has a bit more flexibility.

Effective March 31st, the USPTO accepts employment applications via the following methods:

Online*
E-mail*
Fax*
Mail or Overnight Mail
Hand Delivery

Applicants must submit their application materials, including required documents, on or before the closing date of the vacancy announcement. Applications mailed to the Office must be received by 5PM of the closing date of the vacancy announcement and not merely postmarked by the deadline.

Applications received online, by e-mail, or fax must be received by 11:59 PM of the closing date. Applications received after the closing date of the vacancy announcement will not be accepted. Procedures regarding hand delivery remain unchanged.

Applicants should read the vacancy announcement in its entirety, and follow the procedures for submitting their application in a timely manner. Each vacancy announcement will contain contact information in case anyone has questions.

*Applicants applying online, via e-mail or fax should refer to the links in the vacancy announcement for the online application process, e-mail address, and the fax number of where to submit any required documents.

For more information, see the USPTO employment webpage.

Wow. Continuation Rules Declared Null and Void

2008-04-02T03:04:45Z

This will no doubt be dissected on all of the patent blogs over the next few days. It will likely make for some interesting reading.

Patently-O

The Order

The Opinion

The end result is that things are back where they started (for now). Still a pendency problem.

The decision also raises a question: since the Office cannot implement the proposed rule changes, anybody got a productive suggestion for alternative plans that might help deal with the backlog?

Pendency Problems

2008-03-25T02:31:00Z

There was a semi-interesting article in January's JPTOS about how one might go about addressing the pendency problems at the Office.

In short, the author proposed the following:

The USPTO should lessen quality criteria that require review of a primary examiner's office actions, because the resulting lower allowance rate necessarily increases pendency. Basically, the author's point is that (1) resources (examiners) are being diverted away from examining and to reviewing other examiner's actions, and (2) the reviews are slowing the rate of allowances and thus prolonging prosecution (and so increasing pendency).

I've got problems with this proposal. I don't know the exact number of examiners working in QA, but I'd be surprised if it is that significant (although I could be wrong). The author believes that pendency and quality are necessarily inversely related, which is true to a certain extent, but I hesitate to agree that it's a good idea to neglect one to benefit the other. The Office has always had to strike a balance between responding to critics who point out the shortcomings in the quality of examination and critics of the time it takes to get a patent issued.

Make changes, such as making law school tuition benefits available after only one year at the Office (instead of the current two years), that will help with examiner retention, since losing examiners exacerbates pendency problems.

Examiner retention would certainly go a long way towards helping with pendency. More senior examiners obviously produce more than newer examiners, so it is in everyone's interest to try to keep examiners around the Office long enough to become more senior examiners. There are probably more effective ways to address this problem than changing law school tuition benefits, though. For me, job satisfaction goes a long way, which means give me the tools and the time to do my job the way it should be done, and I'm happy.

Change the production system to encourage examiners to promptly process amendments by awarding examiners one-half count for the first amendment processed per balanced disposal, meaning that a balanced disposal would amount to 2.5 counts instead of the current 2.

I've never had a whole lot of problems motivating myself to do amendments, especially given the workflow implications of letting amendments slide. There has been talk around the blogs of basing production on actions per balanced disposal, which might be a step in the right direction. I personally think that perhaps actions per ultimate disposal (meaning either final abandonment, examiner's answer or patent issue) might work even better.

Make it easier for examiners to be promoted to a GS-15 examining position (as opposed to a management position). This would keep more examiners in high-production positions, instead of removing them from examining altogether.

Personally, I'm not sure how well this would work. Sure, it would be nice for examiners to have easier access to a GS-15 examining position. Currently, you need to fulfill some fairly specific requirements (some of which involve documenting graduate degree-level work) in order to attain a GS-15 examining position. If I remember correctly, there are three 'flavors' of GS-15 positions: generalist, expert, and a third which I don't remember off the top of my head. One of them allows the examiner to keep their current GS-14 production level, but the other two require even higher production.

Truthfully, I don't think it would be a worthwhile trade off for me. Production requirements are onerous enough where I am, and more money wouldn't make higher production requirements worth it.

Also, from the people I've spoken with, I believe that the path to SPE-dom is seen much more as an escape from the production system than it is a path to a GS-15 salary. It is unlikely (my opinion only) that easier attainment of a GS-15 examining position will be an attractive alternative to those primaries who are applying for SPE positions.

Change the current structure of art units to include 25-30 examiners each (instead of the current 10-20). The rationale here is that the current crop of new examiners are going through eight months of training and so should require less supervision when they are released to their art units, so one SPE should be able to manage more of them. This would keep more primary examiners examining instead of moving to SPE positions.

Tough one here. I don't disagree with the sentiment to go with fewer management positions to keep more primaries in the examining corps. I do see, though, how stretched the SPEs currently seem to be, and wonder how well this idea would work. It would be likely, I believe, that were this strategy to be adopted, then even more of the direct supervisory functions of the SPEs (specifically, supervising newer examiners) would be passed along to primaries, which would presumably somewhat offset the productivity gains of keeping more primaries examining instead of moving to management.

Change the way applications are distributed to prevent examiners from cherry-picking easy cases and putting off examining the tougher applications.

This has never been a real problem to my experience. There was a time when some SPEs would routinely docket hundreds of applications to examiners at a time, but I haven't seen that anytime recently. Examiners are also 'encouraged' to pick up their oldest case first (In fact the MPEP says that it is required, I believe) when starting a new application. To help encourage them, each examiner is tracked as to which application on their docket is the oldest one yet to be taken up for examination, and how long it has been their oldest case. It is the SPE's job to monitor this and to make sure that the examiners are not putting off working on an old application just because it might be a tough one.

Of course, just to be a contrarian, I'd point out that cherry-picking cases would actually decrease pendency, because if examiners all worked on the easiest cases first, they'd presumably get disposed of quicker, and so overall pendency would be reduced more so than if we worked on all of the tougher and presumably more time consuming applications first.

The PTO should open satellite offices that are geographically distributed across the country.

This proposal is bandied about every so often. Can't say that I see any down side to this. With everything going to electronic record-keeping these days, it seems like a practical plan, and would certainly expand the pool of candidates for examiner positions. There would be challenges, but perhaps not insurmountable ones.

Limit continuations and claims. This would allow examiners to perform examination more quickly (fewer claims) and to process more new applications (fewer RCEs to examine).

Well, this one has been hashed over ad nauseam, and no doubt will be again when the final decision on the new rules is finally handed down. I believe everyone's positions have pretty much been made clear. No need to go into it again right now.

So, those are the proposals. Personally, I think that if I had to pick a single issue to address in order to decrease pendency, I'd concentrate on examiner retention (although not necessarily through the changes to the law school tuition reimbursement program that the author proposed). I'm not sure what specific actions I'd propose, other than I believe that it would need to address examiners satisfaction with the job they do (and that is a completely separate issue from salary). If you want to retain examiners, they need to be happy doing what they are doing. When they are not, they leave.

Another Idiotic Patent Article

2008-03-11T01:20:55Z

Yet another one of those articles detailing all that is wrong with the PTO has been published, courtesy of Forbes. Like a great many of its kin, it is basically a brief sound-bite of a story, long on fluff and short on substance and analysis, and of course, it cites the standard four or five tired examples of 'overly obvious' patents.

If someone was truly interested in discussing problems at the PTO, it would be nice if they would do a real story, confining the discussion to patents that actually have the potential to cause problems (anybody been sued for exercising their cat with a laser pointer lately?), and they also might happen to mention the fact that examiners cannot simply wave their hands, say that something is obvious, and be done with it. Anybody out there know where I might be able to get ahold of some prior art that teaches swinging sideways on a swing? No, me neither.

Instead, I keep seeing what amounts to a carbon copy of the same ~300-word article published in various forums again and again, about every 2 or 3 months.

Much Ado About Nothing

2008-02-09T15:43:59Z

So, the Summary Judgment Hearing on GSK/Tafas took place yesterday.

And that's about the extent of the news. No decision was rendered.

Coverage at Patently-O and PLI, amongst others.