One small nit: “…which are mostly only rejected as to form.” – Isn’t “form” objected to, rather than rejected?

Otherwise, thank you for your comments. I may have my disagreements, especially with post allowance prosecution, but I appreciate your write up as it bespeaks of thought and sincerity.

No problem. I thought we were largely agreeing.

Thanks for joining in the debate.

-Gene

I know very well that examination is a trade off. Where in my writing do you believe I have suggested otherwise? To the contrary, I have been advocating time and time again for recognition that examination is a trade off and it is unrealistic to take the “leave no stone unturned” approach that is advocated by some, particularly those who despise patent trolls.

I also agree that there are many problems associated with hiring new examiners. They need training and hand holding and babysitting, there is no doubt. But why not allow those with training experience break in new examiners? John White and I have taught thousands of people how to pass the patent bar, and I have trained many hundreds of law students and taught them how to do searches, draft patent applications and prosecute applications. Professional trainers could eliminate the training burden, create a much more sophisticated junior examining corps and lead to a lot of benefit with respect to handling the backlog. It is insane for the Office to burden those who can and should be most productive with training and mentoring examiners. Training should be outsourced and mentoring should be done by retired examiners.

I think your idea about post allowance is a good one. I have never understood why claims cannot be added once allowable matter is defined. Rather than forcing continuations or RCEs something like what you suggest would be a great idea, although it might well lead to fewer maintenance fees down the road, which is something to consider.

Perhaps bad patents are the result of bad searching. I don’t understand why the patent office doesn’t create an assembly line mentality where those who are good at one task continue to do that task. Good patent attorneys have figured this out. You rely on competent searchers to find the art, you review the art and then you write claims that are likely allowable. Unfortunately, the broad claims that you reference might be a strategy for many reasons. With applications pending for so long you never know how many times the Federal Circuit and Supreme Court will change the law, so might as well go as broad as you can. Another thought used to be that you go very broad because you don’t want the industry knowing what is likely going to be patented ultimately. This was something done by some as a result of publication, and at a time when it didn’t take a decade to get a patent. With the backlog you really have to file applications with allowable claims otherwise your clients will have absolutely no rights for the better part of 5 to 10 years.

-Gene

How can attorneys help? I suggested to management that they allow dependent claims to be added for no fee post-allowance (i.e 1.312 practice) as a better way to present trivial claims in an application. That way I don’t have to waste time rejecting filler-type dependent claims during prosecution.

I read Kappos’ congressional testimony concerning S. 515. I think it’s smart to encourage as much administrative post-allowance activity as possible. I would have no problem making a new allowability determination if I was presented with new art. What would that take me…a few hours at most? It might take a supervisor and a director as well to re-open prosecution after allowance based on a third party provided reference, but that would save all parties money since PTO employees are a reletively cheap resource.

One thing examiners don’t need is more time. 1) We really need less claims per case and this is illustrated by the fact that new examiners have cases with the lowest number of claims cherry picked for their dockets. That leaves the harder, longer cases for more experienced examiners. 2) Even with double the time, the quality would remain the same. I have junior examiners come to me for help after searching all afternoon and throwing 15+ search queries at a claim. Many times I do 2-3 queries and find exactly what they were looking for in just a few minutes. So it’s more of a training issue to find desired prior art than a need of more time to perform “wild goose chase” searching. If I had more time, I would simply get a bigger bonus by doing more or have more time for extra bathroom breaks (I work from home so my bathroom breaks would be elaborate). 3) When I allow, I make sure I’m not hit with a quality error which means I search in a such manner that our internal quality auditors can’t find a good reference behind me. It’s embarrassing to have someone find a reference behind you with a few simple search queries. So this does not mean I continue an exhaustive search until “my time runs out”. It means I search until I’m relatively sure I have covered a good number of keyword combinations that cover the claims and the invention in the specification. If I finish early that leads to a production bonus, overtime or a bathroom break, and I always finish early because I have become good pretty at finding what I’m looking for.

So what about the patent backlog? The reason why the office can’t hire too many examiners is because newbs have to be trained and typically they do a terrible job distinguishing allowable subject matter and require lots of babysitting until they are GS-13s (3-5 years of experience). This is simply a matter of hiring more examiners or lowering the amount of examination time per case.

If you look at quality, some examiners can game the system, make it to a primary examiner and still be fairly incompetent searchers which leads to wasted prosecution time on your part and some bad issued patents just because they can’t find what they are looking for. So please don’t come to the conclusion that bad patents means insufficient examination time. This is false logic. Bad patents result from bad searching, and by bad patents, I mean ones where good art could have been reasonably found during examination.

When you all talk of low quality patents remember this: examination is a trade off between efficiency too. If I search for 2 additional hours per case and find nothing, what was the point? I’m wasting time that could be devoted elsewhere, especially to my amendments which I may or may not get an allowance (production credit). If anything, lower the number of claims per case and watch quality go up a bit. So far my experience with Accelerated Exmaination cases (AE) having a lower number of claims has been positive.

What can Kappos do internally? Hopefully he will help continue to update our computer systems, after all he’s an IBMer. 1) My link to from home to work is 1.5 Mbps through Microsoft Remote Desktop Connection which is rather slow and makes my job a bit more tedious than it already is. 2) Our searching program uses TIFF images still. Google Patents actually has a better display portion by showing patents using PDFs with keyword highlights. If Google Patents had a better query interface, it would be better than what we have which is sad. For some stupid reason our image databases go down at 10p on Friday and Saturday nights even though we’re authorized to work overtime until midnight on those days, so often I wind up going to Google Patents to so I can see the patent images (the text portion of our search still works though). 3) Our case transfer, docketing and internal website backbone architecture is seven years so maybe this can be redone as well. I think we have way too many IT people at the office ~1400 (1 for ever 4 examiners) but we still don’t have the systems in place as promised. We supposedly were on an eight year migration to an XML based patent filing and examination system but we’re not even close to that yet even though I believe this is year 8.

I agree with you, and that is why I am going to give Kappos a full and fair shot. I just hope that he doesn’t come with so much baggage that he sees the world through only one particular color of lense.

-Gene

We absolutely do need to stop the one-size-fits-all mentality at the USPTO. My suggestion regarding the presumption is in that direction, and not to do away with it. There are thousands of absurd patents filed all the time. There are so many the prey upon the unsuspecting, get terribly limiting rights, and force needless work on the Office when there is little or no realistic chance the patent will ever amount to anything. What I suggest is a two-tier system. For those who want a patent, for whatever reason, why not offer them something that approximates registration and without much, if any, prosecution? I think a lot would jump on that, leaving open resources for the USPTO to focus on applications where the applicants want and are willing to participate in a process aimed at still having a presumption of validity.

Regarding the Supremes view of patents, they have ensured that their attempts to treat every case interchangeably means discrimination will be rampant. I am not sure about whether that also means applications won’t be examined on the merits in an independent way. We certainly have proof of disparate treatment, but I am not sure about what you say, although I am opening to listening to more.

-Gene

I understand the concern over Kappos coming from IBM and the computer software/hardware cabal. But the fact that he is a patent attorney of at least 18 years is a real plus in my book, and may also lend some credibility to the PTO which is sorely lacking now with the patent bar. Like I know you are, I’m weary of neophyte political patronage dumpees like Lehman, Rogan and especially Dudas who have no real patent experience and who have run the PTO almost into the ground.

Avoidance of reviewing past patents (at least for patents in particular pertinent art fields) should be encouraged

should read:

Avoidance of reviewing past patents (at least for patents in particular pertinent art fields) should be discouraged

Under the current law, I am aware that art found after an application matures into a patent may invalidate a patent. So why change the law to weaken the presumption? I am also aware that the disclosure of art and the rules governing both inequitable conduct and treble damages for willfulness create the perverse logic that companies have used to actually forbid searching for prior art – both for its inventors and for its counsel. I view this as a real cancer that should be addressed on its own merits. Avoidance of reviewing past patents (at least for patents in particular pertinent art fields) should be encouraged. I do not know how to account for KSR’s hyper empowerment of PHOSITA across all art fields, but I’ll save that discussion for another post.

None of this; however, in my humble opinion, warrants the corruption of tampering with the presumption of validity.

Gene, if you have a concern with Office resources now, what do you suppose will happen if the presumption of validity is made dependent on cited art? I know that I would recommend to my clients that the IDS submitted be as inclusive as possible – If this means that literally thousands of references be listed to cover shades of future (unknowable) interpretations, I will call for that storm to pursue my clients rights. With validity modified as you suggest, anything less than that level of diligence would mean that I would be leaving my client exposed. And where do you think the examiner (who, it has been put forth on this blog, doesn’t even have time to fully read the application itself) will find the time to read the thousands of cited references? How does this not weaken the system just as Alan’s desired change?

There are many concerns with the USPTO’s model of operations (count system on the so-called produciton basis). Any offered solution that does not treat this cause as a critical element is noise. The Law requires that an application be examined. Implicit in this is that the application will be examined on its merits. Much as the Supreme Court has pushed for the treatment of EACH application on an individual basis with the elimination of bright line tests (e.g. KSR and relatively soon – Bilski), the treatment of all applications as interchangeable units on a production line violates the implicit spirit of the law that the application is to be examined on its own merits. I am always curious as to why this concept never seems to be explored by the academia.

A possible step in fixing the one-size-fits-all mis-management is to stop treating all applications in a one-size-fits-all manner. D’Oh!

Actually adding a step of assessing the application in the pertinent art field by the Office’s top talent in that field would expedite processing and allow a more rationale assignment of resources. Scoring on complexity, length and nuances can lead to expectations for examiner throughput that would actually treat examiners with more professionalism and respect than they currently receive and thus may also contribute to retention. The need to cherry pick a docket in order to meet quota would be eliminated. The adage of “you get what you measure” is aptly portrayed in the current mis-management of Office resources. Eliminate the noise there and leave the presumption of validity alone.