Dear Mr. Kappos,
I have been practicing before the USPTO for 12 years now and have seen
a lot of ridiculous stuff, but this takes the cake. Note the attached
"Notice of Non-Compliant Amendment" and the grounds therefore -- the
period at the end of claim 1 was accidentally caught in the underline
of the word processing selection when indicating the amended language.
Why did I receive this ridiculous response rather than the examiner merely
noting it in a substantive response or making an examiner's amendment to
correct it? Because the examiner was apparently unable to prepare a
substantive response and wanted to get it off his docket in the required
window for his response before incurring PTA and probably a demerit in
his performance numbers. (The notice was mailed 3 months and 4 days
after our timely filed response.)
What is the impact of such manipulation of the internal system and this
type of gamesmanship? Upset customers. My client is upset at the delay
and added cost. I am upset at the inanity and the waste of my time --
especially when the examiner has his own typographical error in the
continuation sheet of the notice: the sentence ends with two periods.
But do I have any recourse regarding the examiner's poor grammar? No.
Nor would I want to waste my time doing so. But here I am.
My request: instill some common sense and customer service attributes in
the examining corp.
My reaction? In a word, embarrassed. In a couple more words, not surprised.
I've seen instances where examiners use notices of non-compliant amendment to help manage their workflow. This usually happens when they've got lots of amendments all coming due at once. They scour their amendments looking for a reason to send out a notice of non-compliant amendment. A quick 10-minute action and the amendment is off their docket. Some examiners make routine use of this tactic. Sometimes the problems are substantive, but there are many instances where the issues, while perhaps meriting a notice of non-compliance by the letter of the law, were incredibly trivial. I do have to admit, though, that I've never personally seen one quite so trivial as the one that was cited above.
Still, as embarrassing as that incident is, I didn't realize how much worse it could get. Much worse, as it turns out.
The next day, Greg got some emails from an examiner:
I am guilty as charged. I had to move the case under time pressures and
didn't have the time because I had other things to work on -- what I did
under the rules is completely legit though I would have wasted a count and
thrown away money by the system the PTO set up, not me. Would the lawyer
complaining work for free and do pro bono work for one or two cases? I
doubt it. I had my counts for end of fiscal yr and didn't want to waste
this one ... every count extra to the bonus amount handed at end of fiscal
year is wasted money to examiners (but of course, the complaining lawyer
has no clue or cares about the whys of it).
She (yes I know her name - the attny) can cry the blues all she wants and
criticize my writing and two periods. But I've been working at the office
for many years and I know exactly who this lawyer is, Ms. Complainer, I know
its you. This really upsets me because I thought her a nice person -- no
more. You know, if I am such a bad guy why didn't she check her own claims
before she sent out the claims without periods. Nope, easy to blame the
examiner and cry to the commissioner. I actually helped this woman as much
as I could to try and get many applications allowed in many interviews with
her (she represents a law firm out of Dallas TX) and a lot of their
applications are pretty damn close to [---] patents and I helped her to
the fullest I could.
This is so petty and she contacts David Kappos! I am not happy about that
at all and thank you for helping me find out something I did not know.
I am very pissed off about this now.
I definitely feel like she stabbed me in the back and I was very polite and
helpful over the years to her to help her get cases in condition for
allowance. I'll keep that in mind when I examine her cases in the future.
She's not going to get much any more help from me so her ass is going to be
twisting in the wind from now on. I'm also going to email and let her know
I'm pissed off about her bringing this up with Kappos. She just jumped
off a cliff in my eyes. You know, if she just called me and talked to me I
coudl explain exactly what I did that - too late for that lady, you are
going to wish you did not do that, believe me, you are going to regret it.
[Greg note: after sending me the above, the examiner then emailed me:]
She can also forget about an after final interviews --- thats at the
discretion of the examiner and my discretion from now on will be -- no
Good luck writing your future appeal briefs lady and your three year wait
from the BPAI. You really should have thought long and hard about sending
that to Kappos and not contacting me first.
[Greg note: after sending me the above, the examiner then emailed me:]
I may even email Kappos myself since she sent pushed me under the bus.
I am going to let him know that I've helped her come to patentable subject
matter for years and for her to cry over this is beyond petty and a waste
of this busy man's time.
She's upset about the "added cost" yet she was the one who made the
freaking mistake not putting in periods. Now that is where her mistake
should be "pro bono" right --- she forgot the periods not me! NO examiner,
you dumb ass, its always your fault slave. Any questions?
[Greg note: at this point, I emailed the examiner, and explained
to the examiner that he was victim of a coincidence, that the
complaining lawyer was not female and not working in Texas, that
apparently this type of typographical error resolved via Office
Action is common. I asked not to take any action against the
lawyer he mistakenly thought to have contacted Kappos. He was
glad to do so, and emailed me the following:]
Ok Greg. I'm sorry but I had something exactly to what occured and did the
same with the quayle and I often put in two periods by accident just before
end of our fiscal yr 09. These attorneys need to realize that its not "all
Often times its our management here that can be more our adversary than the
lawyers and we do our best to expedite and nobody wants to go to the BPAI
if we can help it. But if examiners are thrown under the bus, making an
examiner your enemy is not a good idea. We can make time more the enemy than
we'd ever be and something that could get allowed quickly might take another
3 years or more, who knows. Esp if you stop suggesting what to do.
I've had other attorneys go up often to Doll/Dudas and they are usually
the "angry kooks" and most management here knows who they are. I recall
this one guy you could just feel the anger and seething over the phone,
like this guy has got issues. A rare occurence but just like there are
weird examiners, there are strange attorneys as well.
Attorneys have to understand that mgmt here will nickel and dime us to death
with all sorts of demerits/minus pts even when they are not deserved or you
actually did the case on time and unless you watch them you'll get minus pts
hurting your rating and your bonus. That is alot of pressure/stress for
Every case handed in excess over the set amount for bonus (say 110,120,130)
its money thrown down the drain for the examiner. Attorneys get paid by
the hour mostly, we do not. If they paid us a set fee for every case, I
know this would not happen but often examiners have 40 cases on their
amended docket and need to move it somehow. Its not intentional to upset
the attorney but if they worked here for a long enough time they would
understand its not to spite them but just an examiner in a world of trouble
trying to move alot of amendeds. Examiners like to get paid for each case
they do and the way the system is set up I totally undrerstand the actions
of that examiner.
Wow. What do you say to that? My embarrassment has been compounded many times.
First of all, despite the complaints about how "mgmt here will nickel and dime us to death with all sorts of demerits/minus pts even when they are not deserved", this examiner wasn't trying to escape the damage that late amendments will do to your workflow. They decided that since they had reached the production level required for their bonus, and they had no hope of reaching the next higher bonus level, they would postpone the count that would come with responding to the amendment until the following fiscal year, through whatever means necessary.
The examiner asks "Would the lawyer complaining work for free and do pro bono work for one or two cases?" Uh, I believe that everybody at the PTO is drawing what is known as a salary. There are no examiners writing actions for free.
To summarize, the examiner did this for bonus money. There is a serious problem with this.
Conducting examination like this clearly can't be condoned under any circumstances, but if they really wanted to save the count for the next year, they could have at least had the 'decency' (if you could call it that) to let the amendment go overdue and eat the workflow points until the new year and then send out a substantive action. Sending out a bogus notice of non-compliance imposes additional time and expense to the applicant for the prosecution of the application.
Worse, the examiner feels that this is 'completely legit'. Right. If that notice of non-compliance was so 'completely legit', why would having a copy of it sent to the Director worry them so much? Since it's so 'completely legit', the Director will certainly back them up, so what's the problem? I'd figure they'd be proud to have their 'completely legit' office actions brought to the attention of the Director. (Who cares about that silly pendency reduction thing?)
Even worse is their plans for taking retribution on the attorney who sent a copy of the action to the Director. I can't even begin to describe how unprofessional this is. Examiners have a job to do, and its a damned important one. Denying a fair examination to an applicant (who is, after all, the ultimate customer) because the examiner has got a problem with an attorney is well beyond propriety. Any examiner who would even consider conducting themselves in this way should be doing something else for a living. Seriously.
Lastly, as it turned out, the examiner who sent Aharonian the emails wasn't even the author of the offending action! What this means is that there are [at least] two dumbasses out there writing these bogus notices of non-compliance. Lovely.
My embarrassment is compounded yet again.