Patent Examiners Told To Issue Patents

Mark Malek, Patent Attorney with Zies Widerman & Malek

I just spoke with Mark Malek, a patent attorney at the firm I am with – Zies Widerman & Malek. Mark had an interesting conversation earlier today with a patent examiner who shall remain nameless. The purpose of the call was to inquire about the status of a particular application that had been filed over 4 years ago and which was still waiting a First Office Action. The patent examiner told Mark that about 2 weeks ago management told the examining corps that they need to start issuing patents. This may seem strange to those who are not familiar with how the Patent Office has been operating, but this is sadly important news to report. The allowance rate had dipped to 42% during the first quarter of 2009, and over the five year term of Jon Dudas the allowance range had dropped from its historical averages year after year.

Because of strict quality initiatives, which really didn’t raise quality all that much, many patent applications were held up, rejected outright or applicants were forced to file continuations or appeal. This lead to a tremendous backlog of patent applications, unrest in the patent bar, unrest among corporations upon whose existence and funding require issued patents, and unrest among patent examiners as well. It seems that the initiatives that Acting Patent Commissioner Peggy Focarino spoke to me about are in full swing and new training has ensued to train examiners how to efficiently and appropriately issue patent applications. This is indeed very good news, and I expect we will see a substantial raise in patent allowances moving forward through the end of fiscal year 2009. Filing patent applications might just become the “in” thing to do once again given a realistic opportunity to obtain rights. Now we can only hope that these initiatives also lower the pendency period so patents can issue while still technologically relevant.

More to come next week. In the meantime, a tip of the hat to the Patent Office!

I hope everyone has a great Memorial Day Weekend!

US Flag over USS Arizona Memorial, Pearl Harbor, Hawaii

Gene Quinn Gene Quinn is a patent attorney and a leading commentator on patent law and innovation policy. Mr. Quinn has twice been named one of the top 50 most influential people [...see more]

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Join the Discussion

19 comments so far.

examiner x
July 21, 2009 04:25 pm
This is BS….
the training academy says all sorts of garbage. the real test is what your spe tells you. MY spe tells me NOTHING IS NEW IN “xxxxx” (my art unit). She also said, “its all out there, and i expect you to find it”. this is an art unit meeting just a few weeks ago.

dont expect anything but shit rejections from primaries, and long winded nonsence 103 rejections from juniors.
drt
June 2, 2009 01:39 pm
What a bunch or morons at the PTO. They crack down on quality scaring the examiners into not allowing anything losing the fees from issue and maintenance. They didnt see that coming? Oh thats right. They moved into alexandria and soon thereafter had to push the telework because they ran out of office space. Guess there’s a reason said morons dont work in the private sector.
~~Logan~~
May 29, 2009 08:11 pm
Gene,

I posted in other threads as “OPQA person”. I am now using this name so that there is no confusion that I am speaking officially in any way for OPQA.

That said, you are correct in that rejections (IPR cases – finals & non-finals) are also reviewed by OPQA. However, the number of allowances is approximately the same as the number of IPR reviews for a given TC. At least they were prior to mid-year. Now since 1000 fewer allowances will be reviewed office-wide this year, the number of IPR reviews will probably be greater than allowances.

Also, the PTO goal is under 10% error rate for IPR cases. For any given examiner, however, if they have greater than about 7-8% (forget the exact # off-hand) they would be rated as unsatisfactory & could be given an oral or written warning on their PAP. Of course, the total number of errors needed to rated as unsatisfactory is fairly high because the # of errors is divided by the total number of actions (non-finals+finals+allowances+appeals+abandonments, etc.) for that time period (quarter or year).

Lastly, you are correct in that in recent years the emphasis has been on the allowance error rate. The main reasons for this are that the PTO has to respond to congress for their allowance error rate (the IPR error rate was not thought of as critical for some reason) and because “bad” allowances create bad PR.

If a “bad” allowance goes out it hits the papers & becomes a big issue because the public sees something that they think should not be getting a patent (patents like the “stick” patent or the “swing” patent or the one for entertaining your cat with a laser pointer are those that are generally considered as “bad” patents – note: I am not criticizing them; just repeating what is commonly stated in the press).

Now, if a “bad” rejection goes out what are the repercussions for the PTO? Really, there are none. A case with a “bad” rejection might, at most, get a phone call to a director or even commissioner or maybe some electronic ink on a blog or 2. But no mainstream press. Largely because the general public doesn’t care if some patent application is rejected or not. And neither does Congress (unless some inventor calls his congressman who may then have a staffer make a call to satisfy them). So, from a PR perspective for the PTO “bad” rejections were a non-issue.

Now, I am NOT at all defending the above practice. I am just explaining why the emphasis in recent years on allowance “quality” and not IPR quality. That practice, ultimately, led to where we are now. Upper management (a JD still at the office, from what I heard) felt that the “bad” allowances were bad for the office & a big issue & decided the PTO needed to have a lower allowance error rate no matter the cost (that’s the quote I heard 2nd-hand, anyhow). This led to 2nd pair of eyes reviews, lower numbers of allowances, etc.

Hopefully, we are getting back on course with the emphasis on better 1st actions, getting the best art in the case ASAP & identifying allowable subject matter at the earliest time. Doing this, and with a little cooperation from the attorneys out there & I think we will be seeing substantial improvements in the near future.

~~Logan~~
Noise above Law
May 28, 2009 05:56 pm
Quotidian,

Amen – well said.
Gene Quinn
May 28, 2009 12:49 pm
Quotidian-

Thanks for joining the debate.

Rising appeals and examiners re-opening to avoid embarrassment is something I am working on. Not sure where it will lead, but definitely a real problem.

My understanding is that the PTO does look at rejections as a part of quality review, but I don’t think they look at as many rejections as they do allowances. So I do think it is unfair to say that they don’t review rejections, but I do think it is fair to say that they should be doing this far more because that is where the real problems lie, at least now. It is also 100% true to say that there is a perception that the PTO has cared more about allowance mistakes than rejection mistakes over the last 5 years (or so). With perception being more important than reality it has had an extremely bad influence on how some (perhaps many) examiners handle cases. I can’t say that I blame them though. Who among us wants someone looking over our shoulder? I think chasing quality lead to unintended consequences, and I personally believe that Commissioner Focarino understands that. Like you, I wish her well.

-Gene
Quotidian Dude
May 28, 2009 12:40 pm
Well said, Frustrated. Most all of these comments raise very good points. Let me try to raise another . . .

We prosecutors will look at any shift in the PTO toward allowance as “good” — I mean just getting back to the “good old days” of 10 years ago would be such a relief. But we need to look at what is really going on here. Does the PTO have the power by law, regulation, or Constitution to adjust allowance rates like turning a spigot on and off? What is this nonsense about too many allowances or too few?

Every single applicant has a right to have his/her application examined on its merits and on its merits only, without reference to any mass metrics, and without reference to any PTO policy goal of increasing or decreasing allowances. If the PTO is using allowance rates, or anything else, to “lean” on examiners to “knuckle down” or to “ease up,” then the PTO is way, way outside its boundaries.

Fer instance, Gene has previously posted on a “rule” whereby examiners get a black mark if there are more than 10% errors in more their allowances. We were not told whether the same rule applies to rejections, but my understanding is that “Quality” Control doesn’t even check rejections, only allowances. If Quality Control also checks rejections and also awards black marks if the examiner’s rejection errors exceed 10%, then such a balanced rule would be welcome. But if management only penalizes errors on allowance — presumably to discourage allowances — then the rule is abysmal and likely illegal.

If the PTO is taking ANY steps to adjust overall allowance rates, there are APA issues, 35 USC 101 issues, and due process issues. I think we prosecutors and our associations have been negligent in not pushing back on behalf of our clients and the system.

At any rate, I really agree with Frustrated. I don’t need a wet-behind-the-ears examiner telling me how to write my claims. I need the examiner to comply with the APA and clearly set forth why he/she is rejecting the claims, including setting forth where each and every element, step, and limitation is met by the cited PA. In 90% of the cases, if the Examiner simply complies with their obligations, they would see that the claims are not met by the prior art.

I have appealed more rejections in the last 3 years of my career than in the previous 7. And in every single appeal the examiner has re-opened prosecution, allowed some claims and re-written the remaining rejections rather than let their shoddy work go before the BPAI.

Ms Focarino has her work cut out for her. Let’s wish her well.
Frustrated Prosecutor
May 26, 2009 05:50 pm
I don’t even care about suggestions for allowable subject matter. I just want the rejections to be using the best art possible on the first office action (i.e., at least browse the spec). I’d also think that it’s very easy to indicate allowable subject matter in dependent claims (that’s an amendment suggestion right there) instead of stretching the references to cover all dependents, as I have seen time and again over the past 2 years. It would also be refreshing if, when an Examiner finds all claim limitations strewn across four or five different references, the Examiner would simply note the claim allowable, instead of slicing and stitching together the references like Frankenstein to meet the claim. I don’t think KSR envisions combinability of references for each claim word.
Noise above Law
May 26, 2009 01:14 pm
Examiner May,

Likewise I welcome your voice, as too often the voice of the examiner heard on blogs belongs to the noisy and not-too-bright few.

I am interested in your perception of “…more of an attorney’s job is being shifted to the Examiner”. I belive there is a distinct possibility that the examiner’s role may change drastically with the Tafas V Doll pronouncement that the applicant (and his attorney) can be forced to do more of the traditional examiner’s role. Specifically, as I have posted before, I tend to view the ESD (and possible forthcoming AQS) type of “non-substantive” rule making capability as greatly diminishing what the examiner would have to do. It is far far easier to connect the dots that an applicant must provide (to MPEP level requirements), and perform a rather cursory search than to examine an application without such documents. Do you see such a possibility and what is your opinion if such a change takes place?
Gene Quinn
May 26, 2009 10:10 am
Examiner-

I don’t think that examiners will be asked to write claims, just to give the attorney/applicant an idea about what they will allow. All too often there is allowable matter in the claims and in the specification and all some examiners do is reject. Some then force the filing of an RCE in order to obtain an extra production quota score. I think that is what the management is trying to stop. This wastes time and adds unnecessary expense.

I definitely think that the production quota needs to change and examiners need to be given more time. The examiner’s role in the process is vital, and having time to work on the case is essential.

Unfortunately, until Congress steps in and reforms inequitable conduct there is not going to be much help from attorneys because anything we do or say is used against the patent to narrow the claims during licensing and litigation. The Federal Circuit is to blame here for ignoring the USPTO view of Rule 56, but since the USPTO cannot force the Federal Circuit to apply the law Congress needs to step in and mandate a stop to the inequitable conduct craziness. If that happens and these changes stick we would have a truly collaborative examination process that should be streamlined.

Thanks for joining the debate.

-Gene
Examiner
May 26, 2009 01:14 am
As an Examiner I am also pleased with the shifting of attitude at the office, although it is for all the wrong reasons (lack of money coming in). However, I seriously hope the office considers finally changing the production quota if the Examiner is going to really start digging into cases to try and find allowable subject matter.

As a primary examiner I have starting taking this approach (more than I have in the past), and while management is making it seem like it should be no big deal to dig through various embodiments in a single application, this is no easy task.

Not only does the examiner have to try and figure out which embodiment applicant is attempting to claim (because the claims are so broad), the examiner must then try and rewrite Applicant’s claims for them (isn’t this supposed to be the Attorney’s job?). Trust me, this takes a significant amount of time in comparison with writing a rejection and getting a response (and pray the attorney understands the art enough to put in an amendment that reads over the prior art already of record). I will admit this is easier for a primary examiner that has experience in the art, but I can’t see many juniors being able to pull this off with the current production constraints (that is, if the SPE will even allow a junior to do so).

I have to say, I’m disappointed that more of an attorney’s job is being shifted to the Examiner, at least that is how it feels from my perspective, and while I don’t really need the extra time to do my job (even with the new initiative), I see plenty of junior examiners that are struggling and just need more attention and to be placed in the proper mindset to do the job (some Examiner’s don’t understand the simple concept of evidence in their rejections).
johng
May 25, 2009 05:02 pm
Hey PTO, do not think I will ever forget what you did. Never. To my grave!

But this recent awakening is good for the country and society as a whole. Brotherhood of man and all,
Gene Quinn
May 24, 2009 07:59 pm
2600examiner-

Thanks for joining the debate. I do think this initiative will help, but also agree that one quick and easy way to frustrate practitioners is to offer a suggestion, have it adopted, then have the claim rejected. Time will tell how this plays out, but I get the sense that the Office realizes that junior examiners need help, and that may be behind the change in quality review focus to helping on the front end rather than only (or primarily or primarily in perception) criticizing on the back end.

-Gene
2600examiner
May 24, 2009 06:29 pm
“As a part of that training examiners are apparently being told to work with applicants to find allowable subject matter if it exists.”

I have my doubts as to the effectiveness of this initiative. If applicants stubbornly cling to broad claims (as they do all the time), examiners would be wasting their time offering suggestions. If examiners offer suggestions, applicants amend, and the examiner finds art then he/she is going to anger applicant by rejecting after offering a suggestion. The main problem here is that there are so many junior examiners that don’t know anything about their art.
Gene Quinn
May 24, 2009 11:20 am
Examiner Y-

What seems to be happening is that the training that Commissioner Focarino talked to me about has started, approximately two weeks ago. As a part of that training examiners are apparently being told to work with applicants to find allowable subject matter if it exists. The word is not simply issue more patents, but rather to deviate from the norm. Rather than simply reject applications the examiners are being encouraged to reject where appropriate, but offer suggestions and try and issue patents where there is allowable subject matter. So don’t just reject and leave it in the applicants court, reject and attempt to issue where appropriate.

If you have not had the training yet it is not surprising this is news to you. I think if you ask around you will see this is legit.

Thanks for taking the time to comment, and or reading IPWatchdog.com.

-Gene
Examiner Y
May 23, 2009 05:44 pm
YMMV. No one told me to issue more patents.
john white
May 23, 2009 07:43 am
This is tremendously good news. Way back, when I was an examiner (Wright Bros., Edison, Marconi, etc.), their were 2 philosophies at work in the PTO, to wit: 1) We allow patents; 2) We reject applications. I worked under both. At the end of the day, when 1% or less of patents have any value, and when only a handful of patents show-up at trial, the harm done by an improper rejection is far, far greater than a questionable allowance. Face it, the quality metric and mantra used by the PTO is not one the Bar and Public finds very useful. The result, despite their best efforts, is a huge backlog and bizarre Kafkaesque examination tactics. Rights delayed, are rights denied in most if not all technologies. Incentive for innovation and creation of value stall. Obtaining examination perfection, or even a very close approximation, is not realistically possible in the current pricing and resource scenario. Courts needs to account for the fact that the Examiner has looked at a given application for 12-15 hours in the course of their review. Even doubling the time and cost would not even ghost the time and resources devoted on the outside to creating and filing the application. Quality is obtained by the many cogs in the system, the PTO being one. But, not the only one. If you really want quality, search it yourself as exhaustively as your own commitment to quality will bear, develop the claims and disclosure accordingly, and reveal your efforts in the file. Your patent should be presumed valid in light of the record (which you helped develop). Let’s get this thing going again!
David Govett
May 23, 2009 02:48 am
I’m a Japanese patent translator who cannot help but wonder whether patent flooding by Japanese companies has slowed down the examination process. At times I encounter dozens of Japanese patents that differ only slightly.
Gene Quinn
May 22, 2009 09:29 pm
Noise-

You are right. The pendulum should not swing to “accept accept accept.” That would be a nice change to have for a while at least, but I get your concern.

I wanted to get this up quickly because it is news, and good news in my opinion. I will follow up with more next week. The short of it is that examiners are not being told to merely issue anything. They are being told that rather than just reject, if there is allowable subject matter try and work something out and make suggestions and recommendations. A far more collaborative approach, and one I have been writing about and begging for over the past many months.

-Gene
Noise above Law
May 22, 2009 05:00 pm
Key words: “…and appropriately issue …”

From my earlier career (before Law), as long as the quality metric is appropriately focused, the results will show for themselves. When Management dictates that quality = reject, reject, reject, well, the results are evident. HOWEVER; I strongly caution against the pendulum swinging too far in the opposite direction. The quality mantra of “Accept, accept, accept” is just as flawed. The lesson is that quality pegged to an artificial pass rate is bogus quality and will get bogus results. Applications must be appropriately examined. Those that deserve to pass should pass. Those do not should not. Sounds simple. But so does “the pass rate should be 72.2%”. Managerially speaking, there is a world of difference in the execution of either simple strategy. And a world of difference in the results.

Second, the systems in place must support true quality. Platitudes and demands without enablement and leaving the count system in place simply will not dispell the ineptitude that has plauged the Office. The Office needs to abandon its philosphy of changing the Law to meet its agenda. The Office needs to understand what the Law is and apply it.

While blog commentators may not represent the true examining corp, the most vocal surely display a disdain and fundamental lack of ability to understand the Law. This cancer must be excised, or the body of the Office will die no matter what the change in mood or focus is desired.