Just wanted to apologize for the screening of comments over the past week.
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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 email@example.com.
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
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
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.
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.]
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The details haven't been released yet, but the memo did outline how the effort would work.
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.
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.
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.
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.
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).
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.
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.)
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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.
The PTO is hiring again, for a pretty wide variety of patent examining positions.
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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.
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.
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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.
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.
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.
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.
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.
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.
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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.
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.
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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.
The office published their Interim Bilski Guidance for Examiners in the Federal Register today.
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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.