Just a Patent Examiner

New Rules of Practice Before the BPAI

2012-02-28T04:05:13Z

Back in November, the Office published a final rule detailing changes in the rules of practice before the Board of Patent Appeals and Interferences. The changes apply to all ex parte appeals in which the notice of appeal was filed on or after 23 January 2012.

The changes seem to be a logical rolling back of some provisions of the rules which required appeal briefs and examiner's answers to include seemingly overly formalistic or redundant information. These include:

* Statement of status of claims
* Statement of status of amendments
* Statement of grounds of rejection to be reviewed on appeal
* Evidence appendix
* Related proceedings appendix.

These sections were never very useful. The requirement for inclusion of the two appendices, particularly considering that they overwhelmingly included the single word "None", made no sense, since their omission was the sole cause for a large proportion of notices of non-compliant appeal brief (in my experience, anyway).

Other provisions are designed to shorten the time to move appeals to the Board and reach final resolution, as well as to clarify and simplify petition practice on appeal, reduce confusion as to which claims are on appeal, and avoid unintentional cancellation of claims due to mistakes in the notice of appeal or appeal brief. These provisions include:

Treating appeals as being taken from all non-canceled claims

Transferring jurisdiction to the Board immediately upon the filing of a reply brief or the expiration of time to file a reply brief; examiners will no longer file a response to a reply brief

Applying default assumptions upon the absence of statements of real party-in-interest [assums the inventors] or related cases [assumes none]

Tolling the period for filing a reply brief upon the filing of a petition alleging a non-designated new ground of rejection in the examiner's answer

The rule changes also cut some slack to pro se appellants if they fail to adhere to the strict requirements of an appeal brief, such as neglecting to include a brief summary of the claimed subject matter.

Overall, these new rules constitute some common sense (and welcome) changes to simplify, shorten and improve the entire appeal process.

Patent Examiner Positions Posted for Detroit Office

2012-02-23T00:27:46Z

In case anyone missed it in the comment thread below, the Office posted examiner positions for the new Detroit office yesterday. There are openings listed for Mechanical and Electrical Engineers. Both postings are open until March 30th, and both cite 'MANY vacancies'.

All of the posted jobs are GS-11 positions, and after glancing at the requirements, it looks like they may be limited to candidates with prior patent prosecution experience or advanced degrees.

The Detroit office is currently scheduled to open in late July.

You can find information by following the newly-added link to the uspto careers web page on the right under 'useful links'.

Obama Proposes FY2013 PTO Budget of $2.953 Billion

2012-02-14T01:34:11Z

Secretary of Commerce John Bryson distributed an email to Commerce Department employees today, with the details of President Obama's proposed FY2013 budget for the Department.

The PTO's proposed budget is set at $2.953 billion, the same as the estimate of the Office's fee collections. This is up from the $2.706 billion budgeted in FY2012, which has since been adjusted down to $2.529 billion due to lower than expected fee collections.

The increase in budget will help to pay for enactment of the America Invents Act, including the opening of the new branch in Detroit, as well as a bump from 10,507 to 12,212 full-time employees, aiding the Office's efforts at backlog and pendency reduction. (Well, that's assuming that I'm reading this report correctly).

Of course, this is only a proposed budget, and will certainly not be passed in its present form. Still, if Congress wants to give the Office the resources necessary to carry out its duties, particularly in light of the AIA which it passed last year, you'd hope they might be inclined to allow the Office to put its fee setting authority to good use.

Commenting Problems

2012-01-18T00:35:40Z

As many of you already know, Live Journal has recently changed the interface for commenting.

One of the fantastic benefits (mostly for me, but also for readers) is incorporating captcha. This immediately eliminated spam comments, which had been requiring a whole lot of effort to keep under control.

The change also introduced some problems with getting comments posted. I've checked on how things are working now, and read the support forums to check on the status of the problems. Things seem like they have settled down somewhat, but not all problems have been fully resolved.

Hopefully these problems will be taken care of sooner rather than later. In the meantime, please accept my apologies for the commenting problems.

JPE

USPTO To Host Job Fair December 9th and 10th

2011-11-29T23:49:22Z

The PTO distributed an email to the examining corps today, with details of an upcoming job fair. Sounds like the hiring of new examiners is about to begin in earnest.

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All USPTO employees are urged to spread the word to individuals interested in entry-level patent examiner positions with room to grow (GS-7 through GS-9) and who have studied or practiced in varied engineering disciplines such as mechanical, computer, chemical, electrical, biomedical, civil and industrial, as well as pharmacology, chemistry, computer science, physics and textile technology positions. All vacant positions have non-competitive promotion potential to GS-13 and are open to all U.S. citizens or nationals.

Tell them that as a patent examiner with the USPTO, they will...

Be working with the largest intellectual property rights entity in the nation
Be supporting economic growth and positioning America as one of the world's top innovators
Gain experience, training and mentorship they won't get anywhere else
Conduct research and interact with applicants who are working on inventive, modern breakthroughs
Have access to alternative, flexible schedules, telework when eligible and highly competitive salary and benefits packages

The two-day job fair will include information sessions and is scheduled for Friday, December 9, from 8 a.m. to 2 p.m. and Saturday, December 10, from 8 a.m. to 4 p.m. Both sessions will take place on the USPTO's Alexandria campus in the auditorium of the Madison Building.

To register for the fair and schedule an interview, direct your friends and family to the USPTO Careers website.

Also be on the lookout for a future notice about vacancy announcements for these positions. The announcements are scheduled for release on or around December 5.

Money!

2011-11-22T03:31:26Z

The Commerce Department budget was passed last week.

The $2,706,313,000 that was budgeted to the PTO is expected to cover all of the fees the Office is expected to collect in FY 2012. It should at least give the Office a fair shot of funding the necessary changes that will be needed to implement the provisions of the recently passed American Invents Act.

You'd like to think that this is an indication that the Office will be more fully funded in future years, but I for one am not holding my breath on that.

Yup, They're Hiring Again

2011-10-28T13:48:47Z

The Office is hiring examiners in the following areas:

Mechanical Engineering (FEW vacancies)
Electrical Engineering (MANY vacancies)
Computer Engineering (MANY vacancies)
Biomedical Engineering (MANY vacancies).

The positions are posted until November 1st, so get those applications in.

The job postings can be found here.

You can read some commentary on this at IP Watchdog.

Things are Looking Up! (Aren't They?)

2011-09-20T00:39:11Z

Well, lots of good things have been happening in the examining world recently.

The CAFC issued its Therasense decision, which will hopefully reduce the number of massive Information Disclosure Statements examiners need to deal with.

The examining corps has apparently accomplished its COPA [Clearing the Oldest Patent Applications] goal of completing first actions on 235,000 COPA applications, which has prompted the Office to issue a memo setting new goals of 245,000 and 255,000 first actions before the end of the fiscal year.

Overtime is back! Examiners are authorized to work 32 hours of overtime per bi-week, effective September 9th.

Patent Number 8,000,000 issued on August 16th.

Then, there was the biggie, the enactment of the America Invents Act (AIA), signed into law by President Obama last Thursday. Whether this is a good or bad thing depends very much on who you talk to, but as with all things, there are likely to be good aspects and bad aspects.

The provision which I've had my eye on is the newly enacted mechanism to legitimize the ongoing fee diversion by congress. It was very disappointing to see it go through, although Director Kappos, in an on-line chat with the corps this morning made the case that it is a good thing, that the fund to hold excess PTO fees can only be used for the PTO, and that the PTO need only make a good case that the money is needed and will be well spent in order to get congress to turn it over. We'll see.

The PTO, by the way, has established a web page with details of the implementation of the AIA by the USPTO, a process which is obviously ongoing and still evolving.

Rockin' the PTO

2011-08-23T23:57:20Z

Well, that was certainly fun, wasn't it?

I was just minding my own business a little before 2PM when the building started shaking, seriously shaking. I got under a door frame, many others just didn't know what to do. Many people stood at the end of the hall looking out the window. Then it was over, and everybody was looking at each other, laughing nervously, and letting the fact that we'd just been through an earthquake sink in.

We evacuated the building, staying outside for about an hour before the all-clear was given. I must admit, I stuck around outside for another 15 or 20 minutes, and only partly to let the crowds at the elevators die down. The Office gave everyone the option of taking admin leave and going home, but between the gridlocked traffic and the Metro running at 15 MPH system-wide, it seemed to make more sense to stay at work.

Anyway, I haven't had a day at the Office like that before.

Same time tomorrow? Naaa. Once was more than enough.

Thanks, Congress.

2011-04-27T02:58:16Z

Last week, Director Kappos sent an email to the examining corps to advise them of the impact the FY2011 budget passed by Congress would have on the Office.

Pretty significant impact, if you ask me.

The budget passed by Congress limits the Office to 2.09 billion dollars in spending for the fiscal year, which means that the Office cannot spend 85-100 million dollars of fees they collect. This will prevent the Office from maintaining the spending levels planned for the remainder of the year.

The bottom line:

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* All overtime is suspended until further notice;

* Hiring—both for new positions and for backfills—is frozen for the rest of the year unless an exemption is given by the Office of the Under Secretary;

* Funding for employee training will be limited to mandatory training for the remainder of the year;

* Funding for contracting of Patent Cooperation Treaty (PCT) search is significantly reduced;

* The opening of the planned Nationwide Workforce satellite office in Detroit and any consideration of other satellite locations are postponed until further notice;

* Only limited funding will be available for mission-critical IT capital investments;

* The Track One expedited patent examination program, scheduled to go into effect on May 4, 2011, is postponed until further notice.

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Ouch.

Screened Blog Comments

2011-04-27T01:01:19Z

Just wanted to apologize for the screening of comments over the past week.

I don't log into the blog every day, and do so even less often when I'm not working on a post, when the volume of comments is low (which is not apparent when they are all being screened), or when I'm just plain busy with other things.

Well, a few weeks back, I noticed that LiveJournal had implemented a spam filter. At first, I saw this as helpful, since for whatever reason, the blog does seem to draw a lot of comments from European domains that are full of spam links.

Anyway, it looks like for whatever reason, about a week ago, it decided that all comments were spam, and filtered them all.

I'll be looking into how to disable this auto-spam filter tonight, as well as going back and unscreening any comments that aren't spam.

Again, I do apologize for the screened comments. If this does continue to be an issue in the future, please email me at just.a.patent.examiner@gmail.com.

JPE

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OK, I believe I've fixed this problem, but I'll be keeping an eye on things for the next few days. Thanks for your patience. -- JPE

PTO: Open For Business (for 6 days, anyway)

2011-04-07T22:38:41Z

Director Kappos sent an email to the examining corps this afternoon, regarding the potential government shutdown and its impact on the USPTO. Looks like we've got a six-day reprieve:

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A Message from Director David Kappos

Dear Colleagues,

As you know, the Administration is working diligently with Congress to ensure that the federal government remains open and continues to do its work on behalf of the American people. However, I wanted to personally inform you that even in the event of a government shutdown on April 9, 2011, the United States Patent and Trademark Office will remain open and continue to operate as usual, for a fixed period, with all USPTO staff continuing to work and being paid.

Because the USPTO maintains sufficient funding not linked to the current fiscal year, the USPTO can and will stay open for business. We have enough available reserves to remain in operation for six business days and intend to do so. During that time we will continue to process the patent and trademark applications that drive our country's innovative economy. Should a shutdown continue longer than the six-day period, a small staff will continue to work to accept new applications and maintain IT infrastructure, among other functions.

I know this news may prompt some additional questions. As soon as any new information comes to light, we will make sure to inform you thoroughly and promptly. Your respective business unit managers will also be reaching out to you to provide further clarification if needed.

Thank you for your hard work and your continued public service.

Sincerely,

David Kappos

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Clearing the Oldest Patent Applications (COPA)

2011-03-22T23:55:12Z

A memo was distributed to the corps last week regarding a new backlog-fighting effort. [The Office's latest Strategic Plan includes the goal of reducing first action pendency to 10 months by 2014; pretty darn ambitious.]

The details haven't been released yet, but the memo did outline how the effort would work.

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Let's start with the bottom line: The Office wants all applications with an actual filing date prior to June 7th 2009 to receive first actions by the end of the fiscal year. Obviously, some tech centers have a larger backlog than others, which means that this goal is likely no problem at all for some, but a big stretch for others.

The Office's strategy in addressing this problem is to

"...rebalance workloads by sharing resources both within and across Technology Centers. Workloads will be rebalanced by identifying technological overlaps between art units and TCs thereby matching backlog applications to available resources."

How effective is this likely to be? Well, it will certainly help, but perhaps only to a limited extent. Any technological areas that are related enough that the applications of one could be reasonably be examined by examiners from the other are also likely to have a similar-sized backlog.

On the other hand, some examiners have past experience and/or expertise in technical areas in which they are not currently examining, for whatever reason. The Office will be distributing a questionnaire which will be used to find such examiners, and to gauge their interest in examining new cases from those areas.

The details on how differences in hours per BD across technical areas are yet to be released, although similar technical areas have similar or identical hours allocated, so this isn't likely to be an issue in most cases.

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This is really an interesting idea. The Office is constantly trying to re-balance the distribution of resources [i.e., examiners] to address the volume of applications received through new hiring, but that can be a gradual process. If the Office is going to have any chance of achieving their ambitious pendency goals, they are obviously going to have to do some innovative thinking.

This program would seem to qualify.

Recent Goings On at the Office

2011-01-25T03:14:27Z

Some odds and ends.

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USPTO Creates Online Subscription Center as Part of Expanded Communications and Outreach Effort

The Press Release.

The United States Patent and Trademark Office (USPTO) today continued to expand its public outreach efforts with the launch of an online Subscription Center. The Center enables the public to easily subscribe via e-mail to an array of USPTO newsletters and alerts. The hub can be found here.

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USPTO Creates "E-mail Hotline" For New Detroit Office Hiring News

The Press Release.

The United States Patent and Trademark Office (USPTO) is streamlining hiring information for people interested in job opportunities at the agency’s new office in Detroit with the creation of an e-mail hotline. Those interested in working for the USPTO in Detroit can ask questions or sign up to receive information about the hiring process by sending an e-mail to DetroitHiring@uspto.gov. All details on job openings, requirements and experience needed, and how to apply will be included in official hiring announcements to be released in the spring. The new mailbox will help the USPTO quickly relay the latest job information to interested members of the public.

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USPTO Introduces Online Tools to Solicit Public Feedback on Patent and Trademark Examining Procedures

The Press Release.

The United States Patent and Trademark Office (USPTO) today introduced two online discussion tools designed to solicit input from the intellectual property (IP) community on how the USPTO can update and improve the Manual of Patent Examining Procedure (MPEP) and Trademark Manual of Examining Procedure (TMEP).

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A New Pilot Program Concerning Public Submission of Peer Reviewed Prior Art

The OG Notice.

In June of 2007, the USPTO announced a pilot program to determine the extent to which the organized submission of documents together with comments by the public would be useful to examiners. See Pilot Concerning Public Submission of Peer Reviewed Prior Art, 1319 Off. Gaz. Pat. Office 146 (Jun. 26, 2007). The purpose of the pilot was to test whether such collaboration could effectively locate prior art that might not otherwise be located by the USPTO during the typical patent examination process.

In the interest of gathering data from a more diverse pool of patent applications, the USPTO in cooperation with the New York Law School's Center for Patent Innovations is launching a new one-year pilot. This pilot will test the scalability of the peer review concept by expanding the candidate pool of applications to technology areas such as Life Sciences, Telecommunications, Business Methods and Computer Hardware and Software, and by significantly increasing the total number of applications that may be accepted into the pilot. This pilot will also streamline the participation process by utilizing automation solutions.

The Impact of the New Count System

2011-01-05T04:22:05Z

It's been almost a year now since the Office fully implemented its new count system. (Some provisions took effect in November 2009, the rest in February 2010.)

The details of the changes were summarized here.

So how are things working out?

Well, that's a good question. I haven't seen any official feedback from the Office regarding whether they've gotten the results that they were seeking (other than the decision by the Joint Count System Task Force in August to let the provisions of the new system continue for another fiscal year without substantive changes, which was understandable given the fact that the changes had been fully implemented for less than seven months at that point, hardly enough time to make a meaningful assessment).

For me, the impact has been pretty much limited to two areas: production and workflow.

My production for FY 2010 was actually about the same as it has been for the previous few years. Since the new count system gives examiners more counts for first actions, and fewer counts for working on RCEs, you'd have to assume that I worked on more first actions and fewer RCEs. This is presumably more consistent with the Office's goals than the previous count system, since they approved the count system changes.

The Office has tools set up so that examiners can track their production, under both the old and new count systems. I went back to see how my production would have been under the old count system, and not so surprisingly, my production would have been somewhat underwhelming under the old system. It wouldn't have gotten me fired, but it certainly wouldn't have gotten me any bonuses either.

It's not that I made some major and conscious change in the way that I've done my work. The fact is, though, that over the course of any given bi-week, I (and presumably other examiners also) will normally check my counts to make sure that I'm not falling too far behind my production requirements. Not that it's a big problem if it happens occasionally, but if I'm short counts, I'd at least like to know about it. When it looks like I'm coming up short, I'll adjust the order of cases I'm working on, if I can, to compensate.

A while back I discussed the proposition that regardless of what performance requirements the Office imposed on the corps, examiners can change the manner of their examination to satisfy them (within reason, I would hope). I suppose the fact that I've apparently changed how I do my job to maintain my production in light of the new count system might tend to support that proposition.

So how was I able to adjust my examination to maintain my production?

Well, the new count system made it pretty easy. It includes workflow provisions whereby RCEs are placed on examiners' Special New docket instead of their Amended docket, meaning that there is no strict time limit on how soon RCEs are acted upon. Instead of requiring that they be acted on within 2 months (as with amendments), RCEs are now placed at the end of a queue for which examiners are only required to process one application (normally the one with the oldest effective filing date) every two bi-weeks.

This means that if a new Continuation or Divisional application is added to an examiner's docket, it will likely be placed in front of most RCEs on an examiner's Special New docket, before many previously docketed RCEs.

The result for me? A greatly inflated Special New docket that is full of RCEs.

Jobs Jobs!

2010-11-20T13:18:26Z

The PTO is hiring again, for a pretty wide variety of patent examining positions.

You can find the list here. You can read some more general information about working at the PTO here.

Some of the open positions listed appear to have been from back in August, but others still are open until November 23rd.

New Examiner Performance Appraisal Plans

2010-10-08T03:03:28Z

The Task Force put together by management and POPA to study ways to improve the examiners' Performance Appraisal Plans (PAPs) has finished its work. The proposed plans are being introduced to the corps in a series of briefings.

The PAP defines the duties for which examiners are responsible, and the metrics by which they are graded. The current PAP has not been significantly changed in close to 25 years, other than the addition of the Customer Service element in 2001.

POPA presents its views on the proposed PAP in their latest newsletter. The new PAPs must be approved by a vote of POPA members. Voting closes on Friday afternoon and results are expected over the weekend.

What kind of changes are we talking about? They're pretty extensive, and there are lots of details. Here's a quick look at what has changed at the highest level.

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The PAP Elements

Examiners are graded on a number of elements, each weighted differently, presumably based upon the importance that the Office places on each of the elements.

Under the current PAP, there are six elements under which primary examiners are graded.

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10% - Patent Examining Functions
The objective of this element is to formulate appropriate action or recommendation therefor with respect to the grant or denial of a patent to an applicant.

Under this element, the examiner is expected to:
(1) check applications for compliance with formal requirements and technological accuracy;
(2) treat disclosure statements and claims properly;
(3) analyze disclosure and claims for compliance with 35 USC 112;
(4) plan a field of search;
(5) conduct the search;
(6) formulate rejections under 35 USC 102 and 103 with supporting rationale, or determining how the claims distinguish over the prior art;
(7) determine whether an amendment introduces new matter;
(8) determine whether a restriction is proper;
(9) determine if the claimed invention is operable/useful as disclosed;
(10) evaluate/apply case law as necessary;
(11) evaluate sufficiency of affidavits/declarations;
(12) determine whether appropriate line of patentable distinction is maintained between applications and/or patents;
(13) evaluate sufficiency of reissue oath/declaration; and
(14) evaluating appropriateness of grounds for reexamination.

10% - Action Taking
The objective of this element is to formulate clear and complete Office actions with respect to the grant or denial of a patent to an applicant.

Under this element, the examiner is expected to:
(1) include all reasonable rejections and/or objections;
(2) make no unreasonable rejections;
(3) make no unreasonable formal requirement;
(4) take no arbitrary or capricious action;
(5) make the record as a whole, reasonably clear and complete; and
(6) properly treat all matters of substance in applicant's response.

The distinction between these first two elements seems to be pretty subtle in some areas. For instance, formulating rejections under 102 & 103 with supporting rationale is assessed under Patent Examining Functions, while including all reasonable rejections and making no unreasonable rejections is assessed under Action Taking.

20% - Patentability Determination
The objective of this element is to determine that all allowed claims in an allowed application are patentable.

Under this element, for any allowed application, the examiner is expected to:
(1) determine that all claims are patentable under 35 USC 102 and 103 over the prior art of record;
(2) determine that all claims are patentable under 35 USC 102 and 103 over all prior art which is not of record but should have been;
(3) determine that all claims are patentable over all other pertinent sections of the statute (101, 112, 251, etc.); and
(4) determine that all claims are patentable over all non-statutory rejections (e.g., obviousness type double patenting).

Since only primary examiners can sign allowances, all other examiners are not graded on Patentability Determination. The weights of the remaining elements are adjusted accordingly.

40% - Production
This element is self evident. The objective is to achieve the assigned production expectancy.

10% - Workflow Management
The objective of this element is to expedite the flow of patent applications through the examination process in accordance with Office policy and provide appropriate service to the public and peers.

Under this element, the examiner is expected to:
(1) handle all applications and proceedings awaiting action in accordance with the time period or special handling instructions prescribed by current Office policy;
(2) forward all work for processing and/or handling promptly or in accordance with prescribed time periods;
(3) conduct all interviews and/or other contacts with the public as scheduled with adequate preparation, and in a courteous manner. Further, no interview and/or other is arbitrarily or capriciously refused by the examiner; and
(4) provide search consultation and other assistance to the public and peers.

So Workflow is based on the speed with which an examiner moves their applications, while Production is a measure of the number of applications processed. These elements really seem to be two sides of the same coin, though, just measured differently. Production does take into account 'other time', so is a measure of the number of counts per hour spent examining. Workflow is a measure of an examiner's ability to meet specific deadlines for taking action on certain cases, such as amendments, which must be acted on within 2 months of the time the case is placed on the examiner's amended docket. It more or less encourages examiners to act on cases to ensure that the Office achieves its statutory goals for responding to applicant's submissions. In both cases, though, the examiner's ability to move applications quickly is being measured.

10% - Customer Service
The objective of this element is to provide appropriate service to our external customers.

Under this element, the examiner is expected to:
(1) return phone calls from external customers, generally in one business day;
(2) review electronic messages generally at least one every work day, and respond by any appropriate means;
(3) provide external customers with normal schedule information via voice mail if working less than a Monday through Friday schedule;
(4) provide external customers with voice mail notice of extended absences of more than two business days; and
(5) direct external customers to appropriate office or person, in accordance with a list provided by Management.

This element was added as part of the millennium agreement signed in July of 2001.

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So, how does the new PAP affect these elements? Quite a bit.

The duties haven't changed significantly, but the weights of the various elements have changed.

35% - Quality
This is a consolidation of the former Patent Examining Functions, Action Taking and Patentability Determination elements. The weight given has gone from 40% for those combined elements down to 35%.

35% - Production
Once again, self evident. Nice to see a decrease in the weight of this element.

20% - Docket Management
The re-named Workflow Management. This element doubles in weight, which obviously better aligns the examiners' PAP with the agency's statutory goals.

10% - Stakeholder Interaction
I was hoping that that particular buzzword had died (along with Total Quality Management), but apparently not. I'm not sure what was wrong with the Customer Service title, but the things on which examiners are graded under this element haven't significantly changed.

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So, at the highest level, the emphasis of the PAP has moved more to workflow, less to production and quality. If you accept that production and workflow are really closely related, though, the end result is that examiners will be graded slightly more heavily on their ability to quickly process applications and generate Office actions (from 50% under the current PAP to 55% under the new one), and slightly less on the quality of those actions (from 40% to 35%).

The details of how examiners are graded for each of their elements are fairly extensive (too extensive to discuss in a single post), and in some cases have been changed quite a bit in the new proposed PAP. The changes, as I understand them, seem to be largely beneficial to the examining corps. I will be very surprised if this new PAP is not overwhelmingly approved by POPA members. If approved, the bulk of the new PAP elements will be effective retroactive to the beginning of the fiscal year.

Count System Initiatives to Continue Through FY2011

2010-09-01T00:20:21Z

The Office distributed a memo today informing the examining corps that the Joint Count System Task Force had arrived at an agreement to continue the new count system [the provisions of which were discussed in a past post] through the end of FY2011.

There are two tweaks to the system for next year. Examiners' production time adjustment (meant to make up for time lost due to reduced counts for RCEs) will be recalculated based on RCEs received by each individual examiner during the first 24 bi-weeks of FY2010. They are also relaxing the 6-month time window within which examiners must work for applications on their regular new docket.

The details will be in the new memorandum of understanding, yet to be released.

According to the memo, the Task Force agreed that since significant provisions of the Count System Initiative were not implemented until mid-February, it was simply too soon to make more substantive changes.

Pre-Appeal Conferences vs. Interviews

2010-08-31T02:28:09Z

Well, since the post I've been trying to write for a couple of weeks hasn't yet come together, I'll throw this stray thought out there.

Why would an attorney/applicant go to the time and expense of requesting a pre-appeal conference without first requesting an interview with the examiner?

I've seen more than a few instances where the attorney has requested a pre-appeal conference, but the rejection seems solid to both the examiner and the conferees, yet the attorney argues (somewhat unsurprisingly) that the prior art doesn't teach what seems to be there. And amazingly to me, in many of those instances, the attorney had never bothered to request an interview beforehand.

When this happens, clearly there is some disconnect between the attorney and the Office. Regardless of whether it is the Office or the attorney who is mistaken, in that situation, an interview is almost always going to advance prosecution more effectively than a pre-appeal conference.

I understand that some attorneys might not have had much luck with interviews in the past, but even so, were I in that position I would certainly want the chance to have some immediate input when the examiner was not interpreting the claims or prior art as I believe they should be interpreted. If the attorney has been unsuccessful with the written arguments filed with their amendments, I wouldn't count on the written arguments in a pre-appeal brief carrying the day, either. Sure, sometimes the conferees will disagree with the examiner and the rejection will be withdrawn. I personally would still rather have some verbal input into the discussion, though, and the only way to do that is with an interview.

New Bilski Guidance and Request for Comments

2010-07-27T23:39:45Z

The office published their Interim Bilski Guidance for Examiners in the Federal Register today.

Surprisingly to me, they did so in the form of a Request for Comments.

I actually think that this is a great idea. We're hearing pretty much the same thing from both sides of the patent world in the wake of the Bilski decision (e.g., How is one to figure out what constitutes an abstract idea, given the complete lack of guidance provided from the Supreme Court?). Since everybody seems to be in the same boat here, it makes a whole lot of sense to put everybody's heads together and try to figure out how to define an abstract idea to the satisfaction of the Supreme Court. (I know; it'll never happen.)

The Office is looking for help in the form of examples of claims which fail the MoT test but are not abstract ideas, claims that meet the MoT test yet are abstract ideas, and candidate categories of business method applications that as a class would constitute abstract ideas.

Public comments will be accepted until 27 September.

In their Interim Guidance, the Office provided a laundry list of factors to be considered in addition to the MoT test when considering whether claims are drawn to abstract ideas. I have to admit that these factors seem to be pretty well thought out, although applying them means devoting even more time to 101 analysis and therefore less time to other facets of examination (like search), particularly since examiners must now write 101 rejections that "point out the factors that are relied upon in making the determination." Since applicants will need this information in order to rebut any abstract idea-type 101 rejections, though, including it in the rejection is obviously necessary.

699,000

2010-07-21T04:01:27Z

Remember that number.

The current new case backlog at the Office is 735,000.

The Office has initiated an effort to reduce the new case backlog to 699,000 by the end of the fiscal year (5 bi-weeks from now).

Ambitious? You bet. But let's try to quantify how ambitious it actually is.

According to the 2009 statistics, in 5 bi-weeks, almost 90000 utility applications were filed. In order to reduce new application backlog by 36000 in 5 bi-weeks, a total of (approx.) 126,000 new cases will need to be moved.

Approx. 6100 patent examiners at the end of 2009 (probably less than that now). Divide. Examiners, on average, will need to perform an initial examination on approx. 14.5 applications over the last 5 bi-weeks, or about 3 per bi-week.

Ouch.

The roll-out of the effort has been surprisingly low-key. No big kick-off meeting, no campus-wide voicemail from the Director, just an internal web page with information on the effort, and big posters in the lobbies of the buildings to track progress of the various tech centers over the next 5 bi-weeks.

From the Special Message from Bob Stoll:

"Achieving the backlog reduction goal will leverage our ability to request Congressional funding to improve the efficiency of our patent processing operations and most importantly, will help us reduce our time to first Office action. This means that the USPTO can make a real national impact by expediting technological innovation that strengthens our country's economic leadership.

Additionally, achieving the backlog reduction goal will clearly demonstrate that we are doing all we can in fulfilling our continuing commitment to provide the best possible products and services to our valued stakeholders throughout the IP community."

Although there are no special provisions to allow examiners to spend more time working on new cases (to the exclusion of other cases), it is surely no coincidence that late last week ~~overtime was restored to the examining corps~~ authorized overtime was expanded to 40 hours per bi-week corps-wide (except for Design examiners).

Director Kappos is certainly nothing if not ambitious. Let's see if the examining corps can make this happen.

The Office is Hiring Again

2010-07-16T02:59:06Z

Yes, boys and girls, the Office is finally looking to hire more examiners.

The announcements are for Electrical/Computer Engineers and Biomedical Engineers.

Although the positions are listed on the USPTO jobs page, for whatever reason the positions are not showing up on the usajobs.gov web site, so I don't have any information on the number of positions or other details.

Bilski Fallout

2010-07-01T03:10:59Z

I'll tell you what, I wish I could write 101 rejections with as little supporting analysis as the Supreme Court did in the Bilski decision. A little discussion of precedential caselaw (Benson, Flook and Diehr), some hand-waving, and the conclusion that the claims at issue are drawn to an abstract idea.

Actually, it didn't even seem like a conclusion, it very much seemed as if the decision that the claims were drawn to an abstract idea was the starting point of the Court's deliberations. What that means, unfortunately, is that there was no analysis of how they reached that conclusion, and I really would like to have seen that type of analysis.

Apparently they were using the 'I Know It When I See It' test (hmmm, that sounds familiar...), which is certainly an excellent test to use if you're a Justice on the Supreme Court, but one which is unfortunately not very likely to be well received when applied by the examining corps.

The Court was able to tell us that although the Federal Circuit's Machine-or-Transformation test is a good one, it is not the only one. Of course, that is as far as they were willing to delve into the matter, but they did encourage the CAFC to feel free to take another crack at it. Gee, thanks for clearing that up for us.

I guess this type of a limited decision shouldn't have come as much of a surprise, but I was really hoping that we'd get something a little more definitive on where to draw the line between statutory and non-statutory processes.

I even went back to Judge Radar's dissent in the Federal Circuit's decision, since it turns out that he was apparently the only one that got it right. His input: "Look to the statute." Well, that's fine, but we're trying to figure out how to draw the line between the abstract idea and the application of that abstract idea. Not extremely helpful advice.

So, what does this decision mean for examination of patents? For the time being, nothing, according to a memo to the examining corps (which, for whatever reason, still has yet to be promulgated corps-wide, despite it's being dated 2 days ago). [and thank you to the commenter who brought it to my attention.] Examiners are to continue to use the Machine-or-Transformation test unless there is a "clear indication" that the test is wrong.

After working under the Office's guidelines regarding the implementation of the M-O-T test for a couple of years, I'd really like to see an example of what exactly would constitute a "clear indication" that the test is wrong.

In the long term, it will be interesting to see if there are significant changes to examining practice for 101 as a result of this decision. The Court did say that the M-O-T test was "an important and useful clue". Since they neglected to give any further guidance on the subject, I'd almost be inclined to just stick with the M-O-T test and have the courts let us know when they find an exception to it.

And when they find that exception, it would also be really nice if they could tell us what it is, and better yet, why.

Bilski [or lack thereof]

2010-06-18T00:20:43Z

I was firmly convinced that the opinion on Bilski would be issued today.

Why? Well, there are [were] only two days remaining in the quarter (three, if you count Saturday), and I've got more than enough to keep me busy without taking a few hours to digest the decision.

Besides that, I had finished writing a Bilski-type 101 rejection earlier this week for an action that I was holding onto just in case. If the opinion had been issued today, I'd have needed to take the time to try to discern the direction that the learned Justices had dispensed, and depending on that direction, adjusted the rejection or withdrawn it altogether.

Just figured that with the stars aligned like that, the opinion would surely have been issued today.

Nope. No decision. Action out the door. And next Monday morning, I'll once again be keeping an eye out to see if the opinion is issued.

I must say, Hal Wegner has been making a pretty compelling argument that the Federal Circuit's decision will be affirmed. If Stevens hasn't been writing this decision, what has he been doing this whole term? And if he is indeed writing it, what are the chances of a reversal? Not very likely, he argues.

Should be interesting.

USPTO Now on Facebook

2010-05-24T23:12:51Z

It was bound to happen sooner or later, what with the steady advance of social networking. First the Director's Blog, now the Office has a Facebook page.

After perusing the thing for a bit, I have to say that it looks pretty useful. Definitely an easier interface to navigate than the USPTO website, depending on the type of information you're interested in.