Bad patents can be addressed on reexamination. In fact, I just completed a reexamination in which a final action was issued in less than a year from when the request was filed. Thus, the system must be modified to stop disfavoring allowances.

Mr. Doll is almost history so there is no need for me to bash him anymore (although I could go on and on) but Ms. Focarino (at least from the above) seems to be more realistic and less stubborn than Mr. Doll. Hopefully there will be a place for her in the new administration, and I hope she will help the new Director address these issues. A disaster (for both the USPTO and for innovation) is looming in 2010+ unless these issues are addressed.

I appreciate you reading IPWatchdog. I understand what you mean with respect to “softball” questions. The goal of the interview was to talk about what the Patent Office is doing to attempt to rectify an important problem, which is one of perception. Many within the Office are afraid (or claim to be afraid) to do their job because they fear quality review. Readjusting resources to help rather than criticize is a good move, in my opinion. I also could not criticize greater use of interviews, including early in the process, because for months I have been writing that should immediately happen and would lead to a more collaborative and cooperative arrangement if the goal were to identify allowable matter early in the process.

I understand that there are difficult questions that could have been asked, and perhaps should be asked. I made a judgment that this was not the time or place to ask such questions. I have for at least 18 months been attempting in my writings to extend an olive branch to the USPTO. I have offered to speak with management, coordinate programs, panels and round-table discussions in an effort to foster an exchange of ideas between the patent bar and the Office, which I think is badly needed. The Commissioner implementing initiatives to make things better is an important first step, and reaching out to discuss them is a very welcome change compared with what has happened for a number of years now.

I will continue to write about problems I see and offer suggestions, and I hope a dialogue can ensue that will survive through whoever the next political appointee is who runs the Office. There will be plenty of time for hard questions and Monday morning quarterbacking, but for right now I think the best thing I can do is show I am genuinely interested in making a better system and not interested in looking back if the USPTO is interested in looking forward.

Of course, your mileage may vary, but this was my decision and approach.

-Gene

The USPTO has a lot to answer for the last couple of years, but your questioning really didn’t tease out any of those answers.

I don’t think John was talking about the IDS rules or what you are referring to. I have written for some time, and I think John also believes, that Congress needs to step in and do something with inequitable conduct so that there can really be a meaningful exchange of relevant information between applicant and examiner. The Federal Circuit continues to ignore Rule 56, and the PTO seems to want only the most relevant art presented. Providing the most relevant art would be a great idea, but if and only if the Federal Circuit can be forced to realize that following Rule 56 and the wishes of the PTO is not inequitable conduct.

-Gene

Item 2. John White writes, “Now, let’s … get some legislative help to match IDS practice with PTO needs!”

Congress already did, years ago. 35 USC s 41(d)(2) requires the PTO to set fees for IDS’s at the average cost of processing. Instead of following the law, the PTO decided to make it practically impossible for applicants to comply with the duty of disclosure, and gave us the IDS rule in spring 2006.

If some examination task is burdensome, then the law (both statutory law and the laws of economics) require the PTO to set the fee appropriately. What’s the cost of considering an IDS reference over 20? $15? $25? $40? No one will balk at that fee level. (What’s the cost to an applicant for writing an ESD per reference? $1000? $2000? Rick Belzer got those kinds of numbers in a peer-reviewed study submitted to OMB…)

The purpose of the Paperwork Reduction Act is to force agencies to study the costs and benefits of regulation, and Executive Order 12866 requires an agency to consider market-based approaches like fee levels before regulatory approaches. Now that OMB (the White House office that oversees these two laws) is giving the PTO closer adult supervision, maybe lawful rulemaking and rational economic decision-making will return.

Item 3. I suggest two additional initiatives -
- solicit ideas from the patent bar, just the way you’re soliciting input from examiners
- do quality review on rejections as well as allowances

David Boundy

Excellent. The PTO could certainly make use of more careerists such as Acting Commissioner Focarino in positions of authority. Clearly we, practitioners, and they, the PTO, are on the same side of the barricade in terms of making the patent system work better for all who have reason to be involved in the system. I am happy to lend a hand in devising solutions, both for real and perceived issues. The PTO side of the system can be fixed with tweaks and proper funding. No “re-invention” (so, so punny) necessary. Go with what works, tweak what doesn’t until it does, de-mystify the process from the outside, and away we go. Tweaking Quality Review is a terrific place to start. Despite the best of intentions, the collateral effects have been too much for the system to bear. Examiner’s have felt undermined and 2nd guessed, and the allowance rate has tumbled. This should help rectify that problem. Now, let’s re-start interviews and re-instate “compact” prosecution, and get some legislative help to match IDS practice with PTO needs!