Will USPTO Money Run Out Before FY 09 Ends?

By Gene Quinn
July 21, 2009

UPDATED: Tuesday, July 21, 2009 at 6:59pm Pacific Time

The last presentation at the NAPP Annual Conference is presently ongoing, with William Smith of Woodcock Washburn giving a presentation regarding hot topics before the Board of Patent Appeals and Interferences. Smith is a former member of the Board while at the USPTO. His presentation is a good one, and sobering all at the same time. He mentioned my interview with Acting Patent Commissioner Peggy Focarino, and noted that the encouragement of allowances that Commissioner Focarino talked about in my interview is being seen by his firm and evidenced by what he called more “lets make a deal” phone calls from patent examiners who are presumably being told to find ways to issue patents. This coincides with what my firm has seen, and what I have heard from others. Sobering about his presentation so far though is that Smith said he fears that the budget problems facing the Office could cause the PTO to limp through the remainder of fiscal year 2009, and perhaps even limp into fiscal year 2010. He suggested that PTO fiscal year 2010 budget is likely going to be difficult to estimate given current economic conditions, and it is even possible that hiring may not restart in October as had been hoped by many of us.  He then suggested there is a chance that even if Congress passes and President Obama authorizes the borrowing from the Trademark Office, the Patent Office may still have to struggle to keep costs down through the end of fiscal year 2009, which will end on September 30, 2009.  These budget concerns were raised in a high profile way in a Wall Street Journal article titled Backlog, Budget Woes Await Patent Chief, which appeared in the paper earlier today.  I was quoted in the article as being cautiously optimistic of the Kappos nomination, but hoping that he does not take positions only friendly to the high-tech sector.

In terms of the PTO budget crisis, I have been writing about this for months, and everyone I know is concerned about what it means.  We frankly do not know what is going on, which leads to speculation.  There is no historical precedent for such an enormous backlog and decreased applications, which makes it difficult to see how this crisis will correct itself without Congressional assistance.  What does seem clear is that the PTO budget problems are real and severe, as evidenced by events and announcements coming from the Office itself.  First, in March 2009, Rob Clarke, the Director of Legal Administration at the Patent Office, told attendees at the PLI Patent Institute that the Patent Office was concerned about its fiscal year 2009 budget due to a drop in applications.  Second, we know that hiring has ceased at the USPTO.  Third, we know that the Patent Office is engaging in cost cutting measures, such as prohibiting over-time and not running the HVAC system on Sundays.  Fourth, the Senate has passed a bill and the House is considering a bill to allow the Patent Office to borrow $60 to $70 million from the Trademark Office.  Fifth, travel has been suspended and those in senior management who typically speak at conferences are not allowed to go to such events.  Finally, Nick Godici has been brought back to the Patent Office on at least an interim capacity to try and address the crisis, which demonstrates that the Obama Administration is not willing to wait for PTO Director nominee David Kappos to be confirmed.  Things do seem very bad at the Patent Office, which is why many, including myself increasingly fear the worst.

We all know that the Patent Office has created this mess by artificially forcing down the allowance rate of applications, which has lead to less revenue from issue fees and publication fees, and which has likely had at least some deterrent effect on some applicants filing new or additional patent applications.  Of course, the real problem is that with fewer applications being granted that means less maintenance fees are being collected, which is the enormous problem that I and others predicted would happen.  You cannot start cutting the patent allowance rate in 2004-2005 and then not realize that with fewer patents you will collect fewer maintenance fees, right?

The problems of the Patent Office are coming home to roost.  Given the struggling economy large corporations are allowing patents to expire prior to the end of their full term by simply not paying one of the three maintenance fees that are due during the life of the patent in order to keep the patent current.  These maintenance fees are due at 3.5, 7.5 and 11.5 years after issuance, and increase over time.  The Patent Office historically gets up to 70% of it revenue from maintenance fees, so this budget problem can easily turn into a catastrophe in the coming months and years.

Innovation is already being held hostage at the Patent Office, with extraordinarily long delays between filing and even a first substantive review of an application, let alone between filing and the issuance of a patent.  If there really is concern that the Patent Office may not make it until the end of the year without additional emergency funding, and if the Patent Office really does not know what the budget will look like in fiscal year 2010, there is a catastrophe brewing.  We need more funding for the Patent Office on a large scale to allow the Office to hire new examiners, and we need to call back all willing retired examiners and PTO employees to help.  Retired examiners can be paid to dive into the backlog, and other can mentor new hires on the job, leaving those experienced examiners to really dive into the backlog and not have to mentor, train or supervise new hires.  Perhaps some retired members of the Board of Patent Appeals can be brought back to dive into the backlog of appeals now pending.  Something needs to be done, and it must start with funding.

It is time not to just fund the Patent Office to keep the lights on, but rather the Obama Administration and Congress need to significantly raise the funding of the Patent Office.  With all the trillions of dollars that are being spent in the name of suring up the banks, helping out AIG, owning car companies and stimulating the economy, not to mention all the money the Federal Reserver is pumping into the economy, why not send a few more measly billions to the Patent Office.  There is no good reason not to significantly raise the USPTO budget, and a huge benefit to the US economy would ensue.  Recessions are times when the next generation of technologies are created by those who have lost jobs in the technology and R&D sector.  Companies that employee people are formed, but all of this requires funding.  Funding comes from issued patents.  Without issued patents start-up companies cannot get funding.

This is not rocket science.  There is plenty of history to draw from.  It is time our leaders realize the magnitude of the problem, learn their history with respect to innovation during recessions and realize that the engine that can grow us out of this horrible downward spiral and economic contraction is sitting right there in Alexandria, VA.  The USPTO can and will help create jobs, create wealth and grow our economy, but if and only if they issue patents, and to do that they need to have money to actually keep the lights on.

My god how did it come to this!  Will someone in Congress or the White House please step up to the plate with a solution?

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 60 Comments comments.

  1. Jules July 22, 2009 9:24 am

    “We all know that the Patent Office has created this mess by artificially forcing down the allowance rate of applications, which has lead to less revenue from issue fees and publication fees, and which has likely had at least some deterrent effect on some applicants filing new or additional patent applications.”

    This statement really sickens me. Everyone has to take their own responsibility, because we are all part of the system, instead of casting blame. The real reason the allowance rate has gone down? PGPUBS, introduced in late 2000, allowed examiners to truly see the state of the art at the time of filing, which as we all *truly* know leads to more rejections with art qualifying under 102(e).

    More rejections leads to more narrow claims, i.e. less broad claims. Narrow claims don’t hold up easily in court, so the value of patents are decreasing. If patents have less value, why pay maintenance fees?

  2. 3700 Examiner July 22, 2009 12:35 pm

    Why hasn’t Obama realized what fixing the USPTO could do for us as a country right now …, yet common everyday people have????? Fixing the mess we currently call the USPTO would provide this weak economy with the strong foundation it’s going to need in order to pull out of recession in any reasonable amount of time. A strong and efficient patent system drives innovation. Innovation drives economic growth. Why is this area of government not getting the proper attention it deserves??

  3. Gene Quinn July 22, 2009 4:23 pm

    Jules-

    My statement sickening you seems like a you problem to me.

    Your explanation is simply false. Examiners have access to all pending applications, even those not published. That has always been the case. So for you to say that the publication of applications gives examiners more knowledge about the prior art demonstrates that you do not know what you are talking about.

    -Gene

  4. Jules July 22, 2009 4:39 pm

    Again, I am sickened – at the casting of blame, the lack of owning up, and the lack of taking responsibility. You seem to have disregarded part of what I said, that is, “PGPUBS … which as we all *truly* know leads to more rejections with art qualifying under 102(e).” This statement is very clear. If you don’t understand 102(e), then you have no business in patent law. I didn’t say PGPUBS “gives examiners more knowledge.” What I said is that it provides more art usable for rejecting claims.

  5. Noise above Law July 22, 2009 5:14 pm

    Jules,

    You are still taking lessons from 6 (who by the way was banned from this site for his blatant and persistence ignorance).

    Correct me if I am wrong Gene, but there is no “more rejections with art qualifying under 102(e)”. All art that would qualify for such has always been available to examiners. The PGPUBS didn’t change a thing in this regard.

    Gene was politely (at least more politely than I would) pointing this out to you. If we are going to start taking responsibility, I suggest you take responsibility for your ignorance. Doing so would increase your credibility and maybe then someone might care if you are sickened or not.

    And by the way, narrow claims are more apt to not even be in court, but if they were, they would be more likely (not less) to hold up. It would also help your credibility if you kept your comments to things you actually know about.

  6. john white July 22, 2009 6:57 pm

    3 cheers for Noise. Noise Up, Jules down. Debate over.

  7. Jules July 22, 2009 8:31 pm

    Maybe I am missing something here. I will try to stay civil, although it can be really hard sometimes with so much misunderstanding going around.

    Noise, you say “Correct me if I am wrong Gene, but there is no “more rejections with art qualifying under 102(e)”. All art that would qualify for such has always been available to examiners. The PGPUBS didn’t change a thing in this regard.”

    I will try to be 100% clear in my disagreement with your statement. You may correct me if I am wrong.

    Prior to November 29, 2000, all art that qualified under 102(e) was limited to ISSUED PATENTS . Not every patent application issued as a patent. Approximately 70% issued as a patent, prior to 2000.

    After November 29, 2000, all art that qualifies under 102(e) emcopasses PUBLISHED APPLICATIONS and ISSUED PATENTS. That is, even applications which do not issue as patents are now prior art under 102(e). Approximately 40% of patent applications now issue as a patent.

    Published applications, herein “PGPUBS” issue 18 months after filing an application for patent. Admittedly, art units with a pendency less than 18 months are not affected by the change to 102(e). Art units with pendency greater than 18 months are affected because now there is more art available under 102(e).

    Note the average pendency in the USPTO is much greater than 18 months, therefore the average patent application is subjected to more art (consider the approximately the 30% that were not issuing prior to 2000). The main source of prior art in the examination process are PUBLISHED APPLICATIONS and ISSUED PATENTS. Therefore, because of more art available, the allowance rate decreases, or at least prosecution takes longer because there is more art to consider.

    For support, you may refer to the statute, 102(e), before and after the amendment made by American Inventors Protection Act of 1999. The amendment allows PUBLISHED APPLICATIONS as prior art. This did not have any effect until 18 months after November 29, 2000, when the first applications became PUBLISHED APPLICATIONS. Therefore, starting approximately May 29, 2002, there has been a lot more art available to examiners for them to make rejections. This has resulted in a decreased allowance rate.

  8. Jules July 22, 2009 8:38 pm

    Noise, thanks for the clarification. You are right when you say “narrow claims are more apt to not even be in court, but if they were, they would be more likely (not less) to hold up. It would also help your credibility if you kept your comments to things you actually know about.” What I meant to say was narrow claims are less likely to be infringed.

  9. Jules July 23, 2009 2:34 pm

    Not only do these truths apply to dispel conspiracy theories, they may also be used to convince people that examiners need more time per case. That is, examiners have to consider *at least* 140-150% more art than they did before 2002 (the extra 30% of applications that never published before 2002 now publish every single year). And that number is increasing. Have at it. Free for use. I offer these truths at no cost, as all I truly desire for this great country and patent system is a fair judicial process and quality for all.

  10. scrappy July 23, 2009 7:17 pm

    “This did not have any effect until 18 months after November 29, 2000, when the first applications became PUBLISHED APPLICATIONS. Therefore, starting approximately May 29, 2002, there has been a lot more art available to examiners for them to make rejections. This has resulted in a decreased allowance rate.”

    That is not really true.

    First off, US applications began publishing in March of 2001, not 18 months after the efective date of AIPA. For a foreign-originating application filed under the Paris Convention, publication is about 6 months after US filing. It can be earlier where prior filed US applications exist.

    Second, for foreign-originating applications (about half), the foreign “published application” was already available under 102(a) as prior art. Granted that’s different from 102(e) and will have a date that is six months after the US 102(e) date, but that’s not a biggie. (Plus, if the Examiner needed the 102(e) date of the application before March 2001, he could either provisionally reject under 102(e) if the application was not secret, or suspend examination until the patent issued.)

    Third, for US originating applications (about half) filed post-AIPA, they still might not publish as PGPUBS if non-publication has been requested, so there is no increase in available prior art in those cases either.

    That leaves a subset of about 1/3 of all US filings that will be available under AIPA that would not have been available for use by Examiners at 18 months pre-AIPA.

    Of that 1/3 subset, about half are subsequently filed in foreign countries: which means they publish 18 months after US filing anyway and they also become available as prior art regardless of US publication. So we’re down to 1/6 now. And many of those 1/6 aren’t even usually searchable by classification since the classification of PGPUBS is well-known to be horrendous.

    There is zero evidence to support Jules’ theory, and all the evidence in the world to support Gene’s.

    Lastly, if the search tools at the PTO were advancing to cover the additional 1,500,000 patent documents that are publishing each year, Jules’ hypothetical theory might be sustainable even so. But the search tools have been fully stagnant since 2001 and US classification has been regressing due to neglect. What this means is even if a good PGPUB publish (from the 1/6 subset), the Examiner likely will not find it.

  11. scrappy July 23, 2009 7:37 pm

    [Takes breath]

    Fourth, about half of those 1/6 are rejected by the PTO and go abandoned. That means (according to the PTO) they are cruddy applications and are either old, obvious, or do not satisfy the requirements of 112. Therefore they do not really add significantly to the totality of the disclosed prior art, contray to what Jules suggests and are really just noise…. That leaves 1/12.

  12. Jules July 24, 2009 1:13 pm

    scrappy, thank you for contributing. I do not have the time right now to verify or disagree with your points. However, I think one of the most telling indicators of the impact of PGPUBS is a simple search of the PGPUBS database (always searched by examiners in the USPAT + USPGPUB database combo. Here are the results using a search string limited to PGPUBS by publication date:

    <1999: 0 hits
    1999: 0 hits
    2000: 0 hits
    2001: 56,403 hits
    2002: 199,004 hits
    2003: 237,089 hits
    2004: 268, 398 hits
    2005: 289,617 hits
    2006: 294,538 hits
    2007: 300,196 hits
    2008: 320,523 hits
    2009 (partial): 187,996 hits
    ————————————-
    Total PGPUBS: 2,153,764 hits

    Clearly, since 2002, over 200,000 references are added to the PGPUB databse each and every year, and that number is increasing. That database is probably the best source for valid 102(e) art. As you point out, the classification of PGPUBS may need improvement, considering the importance of such publications. As you can imagine, related art is often filed within a relatively short timespan. We shouldn't wait around until these applications issue as patents in order to use them as prior art under 102(e) when PGPUBS is readily available. Any art unit with a pendency of 18 months or more will readily agree.

    I don't know how much more I can simplify this right now. If you want to diminish these facts, please be clear and don't just estimate half of this, half of that, blah, blah, blah… There's a lot more art to consider for every case since 2001, period.

    Also, it is a funny observation, to consider the similarity in numbers of the 30% of patent applications that never issued pre-AIPA and the approximately 30% drop in allowances post-AIPA.

  13. scrappy July 24, 2009 5:21 pm

    [Apologies in advance for yelling]

    JULES, WHY AREN’T THE PGPUBS CONCATENATED TO THEIR RESPECTIVE PATENTS??? YOU ARE CORRECT THAT BECAUSE OF THE ARCHANE FILE SEPARATION BETWEEN PGPUBS AND USPATS IN THE PTO’S EAST DATABASE, THE EXAMINERS HAVE A TON MORE DOCUMENTS TO FLIP THROUGH!!! BUT IT DOESN’T GIVE THEM APPRECIABLE MORE PRIOR ART TO USE IF THEY’RE ONLY SEEING DUPLICATES!!!

    HERE:
    2001/0000001 -> US6402857
    2002/0000001 -> US6557180, US6993794
    2003/0000001 -> US6886559
    2004/0000001 -> WO2004002250 (US Patent not yet issued, continuation filed)
    2005/0000001 -> US6769139, US7003810
    2006/0000001 -> US6973930
    2007/0000001 -> WO2007044065
    2008/0000001 -> CA2591517
    2009/0000001 -> FR2920088, DE102008019377

    Do you see Jules, even if we had NO PGPUBS, there are equivalent pubs to each of these. For 7 of the 9, there are equivalent US patents or PCT applications!

    The fact that we started publishing applications has NOT added appreciable to the prior art available to the Examiners for rejections. (I grant you there are, due to US law, differences in the effective dates of the references, but that would not account for the hypothetical increase in rejections that you allege.

    Gene is right – get over it.

  14. scrappy July 24, 2009 7:06 pm

    [Apologies in advance in this is a multiple post]

    Jules, why aren’t the PGPUBS concatenated to their respective patents??? You are correct that because of the archane file separation between PGPUBS and uspats in the PTO’s EAST database, the Examiners have a ton more documents to flip through!!! But it doesn’t give them appreciable more prior art to use if they’re only seeing DUPLICATES!!! Stagnation of the EAST search system since 2001.

    HERE – duplicates:
    2001/0000001 -> US6402857
    2002/0000001 -> US6557180, US6993794
    2003/0000001 -> US6886559
    2004/0000001 -> WO2004002250 (US Patent not yet issued, continuation filed)
    2005/0000001 -> US6769139, US7003810
    2006/0000001 -> US6973930
    2007/0000001 -> WO2007044065
    2008/0000001 -> CA2591517
    2009/0000001 -> FR2920088, DE102008019377

    Do you see Jules, even if we had NO PGPUBS, there are equivalent pubs to each of these. For 7 of the 9, there are equivalent US patents or PCT applications.

    The fact that we started publishing applications has NOT added appreciable to the prior art available to the Examiners for rejections. (I grant you there are, due to US law, differences in the effective dates of the foreign, not US, references, but that would not account for the hypothetical increase in rejections that you allege.)

    NOTE: Patents are identically effective for 102(e) prior art as published applications (yes, ther is a difference in the publication dates due to the backlog which often affects the availabiilty date)..

    Gene is right!

  15. scrappy July 24, 2009 7:09 pm

    Hey Gene, can you fish my last attempt out of the spam filter… muchas gracias.

  16. ~~Logan~~ July 25, 2009 12:29 pm

    Scrappy, et al.

    Jules IS correct, at least to a point. And so are you. Sounds like most examinations 🙂

    While EVENTUALLY the vast majority of PUBs WILL BE available in another form, this is usually (as shown by your own small sample) many, many years after the PUB is available. Why can you not see that?

    PUBs allow references to be seen much SOONER than most would normally be available. These are available (in general) 18 months after filing. The patent (IF it does patent) is usually not available for 3-4++ years after filing (as we all know with the backlog, this is probably increasing and not decreasing). That makes a LOT more prior art available at any given point in time than would otherwise be available (even assuming that the examiner, or applicant for that matter, searched all the related foreign databases).

    Scrappy, I think that you are looking at it from the wrong POV. If you look at a case examined today, applications filed in 2006-2007, for example, are available as prior art via PUBS. Without PUBs, probably 98+% (100%?) of this art would not be available in the US database as they would not have issued as patents yet (most probably not even a 1st action yet).

    While you are correct that a significant % would be available in some foreign database, these still need to be searched. And there usually needs to be a translation to be very useful as abstracts are of limited use since they have few details. And that is even assuming that anyone knows WHICH foreign database that prior art can be found. Is it in the JPO database? The WO database? A Canadian database? Is it in French or German or Korean or Russian or Taiwanese or …. Get the picture??

    Now, if you are talking about OLD PUBS (e.g., 2001-2003), clearly the older the PUB the less likely that there is not a readily available corresponding US Patent & the PUB is of less relevance and this is where it would help to have the PUB concatenated with the corresponding patent.

    Hope this clears things up for all of you and can settle things down. 🙂

  17. ~~Logan~~ July 25, 2009 12:41 pm

    (Pardon the multiple posts, but wanted to split up the 2 topics)

    Now, as to PUBs increasing the rejection rate, I do think that it has helped to increase the rejection rate to some extent. As explained in my preceding post, PUBs allows a lot of prior art to be available sooner than it would otherwise & thus allows some rejections to be made that wouldn’t be able to be made otherwise. (BTW, I am NOT saying that the large downturn in allowance rate is all due to PUBs. Far from it. Just that it has contributed somewhat to it. There were a lot of other factors that have contributed to it, both internal & external to the office. THAT is another issue.)

    Based on the reviews of cases I see (one of the electrical areas), a large percentage of the cases use PUBs as a reference in their rejections. If the PUB wasn’t available, the rejections probably wouldn’t have been made. While some of those PUBs would be available in SOME form SOMEWHERE in the world, finding that can be somewhere between difficult and impossible.

    Do you attorneys out there see a lot of rejections using PUBs as opposed to only patents, NPL, & foreign? I would be willing to bet that you do see a LOT of cases using PUBs. Wouldn’t this tell you at least a significant % would not be rejected if the PUB wasn’t available? Seems it to me.

  18. breadcrumbs July 25, 2009 2:19 pm

    Do publications even matter? Aren’t all applications (published or not) available to examiners? Isn’t that how intereferences are determined?

  19. scrappy July 25, 2009 4:46 pm

    “While EVENTUALLY the vast majority of PUBs WILL BE available in another form, this is usually (as shown by your own small sample) many, many years after the PUB is available.”

    Not many, many years for the vast majority – you know that. Average pendency, according to the PTO, is now about 33 months. Which means, on the average, the patents publish about 14 months after the PGPUBS (which publish between 18 and 19 months). I could have gone and got the published (at 18 months) foreign apps for the majority (all?) of those granted US patents to show you they were also available, at 18 months.

    http://www.ipwatchdog.com/2009/04/22/uspto-backlog-patent-pendency-out-of-control/id=2848/

    “PUBs allow references to be seen much SOONER than most would normally be available.”

    Well yes, because of the backlog. If average pendency were 18 months like it was around 1990, we almost wouldn’t be talking about this. So Jules is right in that respect: the problems the PTO is creating with the backlog would be much worse without PGPUBS.

    “If you look at a case examined today, applications filed in 2006-2007, for example, are available as prior art via PUBS. Without PUBs, probably 98+% (100%?) of this art would not be available in the US database as they would not have issued as patents yet (most probably not even a 1st action yet).”

    No where near accurate: try perhaps 75% of this art would not be available in the US database. That doesn’t include WO and EP and JP published applications which would bring my correct number down to under 25%.

    PGPUBS:

    Results of Search in AppFT Database for:
    APD/6/1/2006: 1161 applications.

    USPATS:

    Results of Search in US Patent Collection db for:
    APD/20060601: 340 patents.

    “While you are correct that a significant % would be available in some foreign database, these still need to be searched. And there usually needs to be a translation to be very useful as abstracts are of limited use since they have few details.”

    If I’ve been doing machine translations of all major countries (including JP) since before 2001 (long before the translations were available at the EPO and JPO web sites, which they have been since about 2007 and 2005, respectively), then why can’t the PTO? Their IT budget is astronomical. All their foreign databases on EAST should include complete machine translations. It’s free for the doing! (The JPO has made full Japanese text available since 1993 – but almost no one was using it.)

    “Is it in the JPO database? The WO database? A Canadian database? Is it in French or German or Korean or Russian or Taiwanese or…. Get the picture??”

    Why aren’t all foreign family members concatenated (i.e. with their U.S. counterparts) into a single record? (See for example how WPI does it.) What’s with this arcane country file separation?? Why do Examiners need patents that are prior art separated by country??? Wait Logan, let me go search the Luxembourg database….

    “Based on the reviews of cases I see (one of the electrical areas), a large percentage of the cases use PUBs as a reference in their rejections.”

    That’s because EAST by default brings up PGPUBS before patents…. get the picture. 🙂 I never cite a PGPUB when a corresponding US patent exists. (I can’t tell you how many times an Examiner cited a PGPUB when there was already a corresponding US patent. Same goes for foreign cites by Examiners.) I work in some hot areas so PGPUBS are a large percentage of what I cite (they can be well over 50%), but I assure you that for those, well over 90% of the PGPUBS I cite have JP counterparts.

    “Do publications even matter? Aren’t all applications (published or not) available to examiners? Isn’t that how intereferences are determined?”

    Yes, they’re all available to Examiners. Even before the IFW (electronic file wrapper), the PTO kept paper “interference files” which were not available to the public, but allowed the Examiners to search other pending applications, by classification.

  20. scrappy July 25, 2009 4:47 pm

    Gene, pretty please? (Just did another) 😉

  21. ~~Logan~~ July 25, 2009 4:49 pm

    breadcrumbs,

    While all applications are available to view (particularly now with the new version of EAST where we can search non-published applications for interferences; before this the only practical way to search for interferences was to search PUBs. The old way of using interference files died away long ago), the applications are NOT available as _prior art_ until they publish. See MPEP 1302.08 for details about interference searches.

    In accordance with 35 USC 102 only published material can be used to make a rejection under 102 or 103. Thus, if an application is not (or was not) published, it can not be used as prior art. That is why PUBS make a difference.

  22. Jules July 25, 2009 6:13 pm

    Notice the downturn in allowances also coincides (almost too clearly) with post-AIPA, 1999 and later:

    http://ipwatchdog.com/images/pto_allowance.jpg

    This is not to say there are less patents issuing (I know this statement is confusing). But if you are familiar with the way RCE’s are counted as new cases, then you may realize the difference. About the same number of patents may be issuing, but cases just take longer, and usually wind up with narrower claims. That is why I said above, “the value of patents are decreasing”. Arguably, you just can’t get broad claims like you used to… I think it depends on the inventor or corporation.

    Thank you Logan, for clarifying some issues. I can’t keep up the fight by myself…

  23. Gene Quinn July 25, 2009 10:12 pm

    Jules-

    I am not sure I would agree that allowances are decreasing post AIPA. The historical averages typically range between 60% and 70% (sometime higher than 70%, but rarely lower than 60%). That is, of course, until the reign of Dudas started, and in 2005 you notice a real steep downward decline, all the way to 42.5%.

    You are right about the way RCEs are counted, but remember that before RCEs there were always continuations and Transitional After Final Practice under Rule 129. TAFP only applied to patents filed on or before June 1993. This practice morphed into RCE. So I think there have always been that same kind of situation going on so the percentage drop should be comparing apples with apples, albeit maybe a Red Delicious with a Granny Smith, but still both should be apples.

    From what John Doll has said, even though the allowance rate dropped to 42.5% about 60% of applications mature into an issued patent. He wants to make that sound like the historical norms have been met. However, when the allowance rate was 65% +/- by some estimated up to 90% of applications would issue ultimately in some form. Not sure that number is true, but I do think it is realistic to say that a number far greater actually became patents, which means Doll’s argument doesn’t hold water.

    Does anyone have good numbers regarding the overall application to patent rate in years prior to 2005?

    -Gene

  24. scrappy July 26, 2009 6:22 am

    There has been no real “downturn in allowances”, only an “upturn in churning”, which means patents are (improperly?) rejected and continued one or more times before allowances. See pages 11 and 12 for true statistics regarding the actual “abandonment” rate (it isn’t decreasing significantly):

    http://works.bepress.com/rkatznelson/54/

  25. scrappy July 26, 2009 6:36 am

    The downturn in allowances simply had to to with the brash agenda of the pro-big-business (and pre-socialist) agenda of the Bush administration. It’s easier to control a few large and powerful corps, than the entire free enterprise market.

    Big business hate patents. Patents never help (and always hurt) the company that already has market dominance. Do you really think MS wouldn’t do away with patents completely if it could?

    Your next innovation will come from (large and powerful) Goldman Sachs in the form of fictional carbon credit transfers. Oh you were looking for something more sciencey? So sorry – we’re sure these will produce sciencey “derivatives”. In the mean time, they’ll all get bonuses, courtesy of the feds.

  26. scrappy July 26, 2009 6:58 am

    P.S. The RCE part of AIPA has made it too easy (on all sides) to “continue” or “entice continuing prosecution” (and get added “counts”) rather than finally determining issues.

    I would eliminate RCEs completely – the system worked better when it wasn’t so “painless” or “easy” for applicants to continue.

  27. ~~Logan~~ July 26, 2009 1:50 pm

    Scrappy,

    I have to still disagree with you on many of your points. Clearly, you are missing what I am saying. And I think what you are not missing you are twisting to make your point (much like upper PTO management has done).

    You say “Average pendency, according to the PTO, is now about 33 months. Which means, on the average, the patents publish about 14 months after the PGPUBS (which publish between 18 and 19 months)”

    This of course is an AVERAGE. In most of the electrical areas (particularly 2600, 2400, & 2100) as well as business methods, applications do not even get a 1st action for 3-4+ years. Gene himself has posted about this recently. Some cases are waiting 5-6 years for a 1st action! The art I used to work in are working on new cases filed about 30 months ago. And they are far from the worst in the TC.

    So, clearly, while there may be a 14 month difference in the AVERAGE pendency & PUB, this does not apply to many areas in the office, particularly in the arts that are more quickly changing technologies. That is a simple fact.

    You then say “No where near accurate: try perhaps 75% of this art would not be available in the US database. That doesn’t include WO and EP and JP published applications which would bring my correct number down to under 25%.”

    Firstly, you just pick “75% and “25%” out of thin air with no evidence. That does not provide a convincing argument any more than if an examiner made the same type of assertion in a rejection. Further, you ignore the fact that alot of these docs are in foreign languages or are abstracts only , which limits the usefulness of text searches.

    Yes, translations are available in various forms, but the translations are not always searchable. And you do not know which database that document may be in. It may be in JPO or WO or it could be in something else. Like you say, ALL of these databases should be concatenated together. However, they are NOT. So, until they are we all still have to deal with the state of the searchable databases available and where it is most likely that relevant prior art can be found.

    Next, your stats of:
    “PGPUBS:
    Results of Search in AppFT Database for:
    APD/6/1/2006: 1161 applications.
    USPATS:
    Results of Search in US Patent Collection db for:
    APD/20060601: 340 patents.”

    do not appear to be correct. Or I couldn’t reproduce them, anyhow.

    Doing a search in EAST, there are 111,100 US patents with a filing date of 6/1/2006 or more recent. There are 732,741 total references (PUBs+ patents) with a filing date of 6/1/2006 or more recent. That means that there are 621,641 pubs out there with a filing date of 6/1/2006 or more recent.

    Even if we assume that ALL 111,100 patents in this time frame had a corresponding PUB (worst case scenario as not all applications are PUBed), that still leaves 510,541 PUBs that need to be considered. Over a half a million references!

    Using a date 3 years ago today (7/26/2007) the discrepancy is even greater.
    There are 32,398 patents with a filing date of 7/26/2007 or more recent.
    There are 327,134 total US references (patents + PUBs) with a filing date of 7/26/2007 or more recent.

    Subtracting out the patents, and a corresponding # again (as above), this means that there are 271,338 PUBs without a corresponding US patent for cases filed since 2 years ago.

    How can you look at these numbers & say that there is no effect (or that it is negligible)??

    One more other really important point you seem to be missing is, when you are searching, you don not know where the prior art that may correspond to the PUBs might be until you have the PUB. It is easy if you have the reference (as you do when citing the art) to find corresponding references. Doing it the other way is not so easy. It would be necessary to literally search EVERY patent database in the world to make sure you find the all of the corresponding references. As we all know, due to the time constraints, that is not possible. PUBs make up for a lot of that . You yourself point out that these are different databases that would be put together. I agree. However, they are not together so we can not argue that IF they were then the PUBs would not add much.

    Oh, one more. How about all of the US applicant’s that are NOT filed as a PCT or not published in a foreign country (this is a very substantial %). PUBs cover these and they need to be considered.

    Lastly, while you are correct that the DEFAULT in EAST is to show the PUBs 1st, you can easily decide on the order you want to view them & many examiners do. Personally, I sorted them by date & started with the oldest to newest in most cases. Also, even in the default you just need to go “backwards” to go to the oldest & go from there. I agree that it is usually best to use the patent instead of the PUB when applying prior art when possible. However, the PUB gives an earlier pub. date so can often be used as a 102(b) where the patent is a 102(e) which makes a difference in many instances.

  28. scrappy July 26, 2009 4:20 pm

    “Firstly, you just pick “75% and “25%” out of thin air with no evidence.”

    Wrong. I ran searches for 6/1/2006 and 6/1/2007 and averaged them to find an accurate representation of your period 2006-2007. Is there a problem with my methodology? If you can’t reproduce the data, that is not my fault. I can reproduce yours.

    You then tried to skew the date range from your original “2006-2007” to “6/2006 – 4/2009” (the pub delay is about 3 months, see pub 2009/0187096 in your set), and you still got a patenting rate of 18%, meaning 82% of this art would not be available in the US database, not your 98%+ or 100%, and you still question my assessment that your numbers are no where near accurate! Be honest, Logan, your numbers were no where near accurate. (You sound like 6K in that when you are wrong, you would rather argue and project than admit it. That’s immature.)

    “Doing a search in EAST, there are 111,100 US patents with a filing date of 6/1/2006 or more recent. There are 732,741 total references (PUBs+ patents) with a filing date of 6/1/2006 or more recent. That means that there are 621,641 pubs out there with a filing date of 6/1/2006 or more recent.”

    I suspect you do not know how to use EAST correctly, because when I run the same search on the USPTO web site, I get 113629, 629778, and 743407. Is EAST not up to date?

    “Using a date 3 years ago today (7/26/2007) the discrepancy is even greater. There are 32,398 patents with a filing date of 7/26/2007 or more recent. There are 327,134 total US references (patents + PUBs) with a filing date of 7/26/2007 or more recent.”

    What year are you living in Logan, 3 years ago today is 7/26/2006. Even that data is no where near your 98%+ or 100%.

    Over and out for you, Logan.

  29. ~~Logan~~ July 26, 2009 8:20 pm

    Scrappy,

    Firstly, you misinterpreted some of what I originally said (I’ll assume by mistake – no need to assume malice unless proven. Something you might do well to remember).

    1) When I made reference to “2006-2007” it was not intended to mean the range of years but was meant to mean “2-3 years ago, for example”. (BTW, yes, I admit I had a typo when I said “3” years ago in your quote instead of 2. I am not perfect & should have proofread better. I am sure you understood what was meant. No?). I was throwing out the 98+% based on the info sites like Gene’s here have been spouting about cases not getting 1st actions for 3-4+ years after filing. Admittedly, the same % does not apply to arts like the simpler mechanical arts that are way ahead & lowering the office average pendency as would apply to the areas with the big backlogs (where 1st actions ARE 3-4+ years – e.g., 2100, 2400, 2600, 3600).

    For THOSE areas I DO believe that 98+% of PUBs are not patented within the 2-3 year framework I was discussing. Can you at least agree with that? Based on what you have said it sounds like the area you work on normally would fall out in these areas (or maybe the bio-chem. No idea what there backlog is for sure.)

    2) As to us getting different totals, it appears there are simple answers to the differences. (Unlike you , I will give you the benefit of the doubt that you know how to do a proper search ad not throw around insults unnecessarily to obscure the argument. FWIW, I DO know how to use EAST very well.) Taking a look at your post & mine & doing some more EAST searching, it looks like the differences are easily found. One part was a error in what I wrote. Should have be June 10 not June 1. The other is the way you did your search. You included >= while I did >. Making these changes we would wind up with the same numbers. Either way, this argument is a red herring and does not change the basis of the arguments that are supported by the facts.

    Whatever the exact # is, I notice you did not disagree with the main point that the numbers were being used to support. For that matter, you basically AGREED with what I was saying.

    You said “you still got a patenting rate of 18%, meaning 82% of this art would not be available in the US database” This backs-up what Jules & I was saying. The VAST majority would not be readily available to the average examiner the way the databases are currently configured. And the addition of this substantial % greatly increases the number of potential references that are available to make rejections with.

    I am STILL waiting for you to address the facts of the numbers that I present. Either way, for cases with a filing date of 2 years ago.
    I’ll repeat (with undated & corrected numbers)

    – patents issued with a filing date of 7/26/07 (inclusive – i.e., using >= as you did) or more recent – 32565
    – PUBS issued with a filing date of 7/26/07 (inclusive – i.e., using >= as you did) or more recent – 295719
    – TOTAL issued with a filing date of 7/26/07 (inclusive – i.e., using >= as you did) or more recent – 328284

    This means that 90.08% of the references that have a filing date within the last two years (since 7/26/2007, inclusive) are NOT available as patents. Even greater, as can be expected, than using your date of June 2006. If we move to one year ago, the numbers are 3296, 74238, and 77534, respectively. This puts the % at 95.75%. Admittedly not the 98+, but getting close (and, as I said before that was more a SWAG). And how many of THESE are readily available elsewhere?

    Now, with all that said, I have some questions for you.

    A) Where are the FACTS to support your “analysis”? You threw out numbers saying, ultimately, “So we’re down to 1/6 now.” of PUBS are not available otherwise (your post on July 23rd, 2009 7:17 pm, above). You throw out a lot of half or this and half of that without support. Are these SWAGs also or can YOU support them? While I was off in my numbers, it was not that huge of a difference.

    B) You said in the same post that “Third, for US originating applications (about half) filed post-AIPA, they still might not publish as PGPUBS if non-publication has been requested, so there is no increase in available prior art in those cases either.” While correct that applicant’s can request non-publication, based on what I see only a very small percentage actually do this. Even so, this does not effect the cases that ARE PUBed that the examiners have to go through. Another red herring.

    C) What little stats you DO provide are far from being statistically significant (you DO remember Stat class, right?) Picking a case from each year or picking cases filed on 2 different days does not come close to being significant. You need a much larger data set.

    D) You STILL did not address the point that simply knowing that somewhere in the world something was published in some patent database does not make it readily accessible. Until we get one database to cover all of the others, and that database being readily text searchable in English, PUBs adds in a LOT of reference that are not readily available elsewhere. Why do you insist on beating this dead horse?? It seems pretty straight forward to most of us.

    D1) I will give you that many examiners don’t, or don’t know how to, search many of the foreign databases. Unfortunate, but true. Part of this is time limitations. So for most of these examiners, the inclusion of PUBs IS a tremendous source of references that THEY would never find otherwise as they probably would not search ALL the foreign databases necessary to find ALL the possible references that are now covered by PUBs. Not defending it, just stating the way it is.

    Lastly, PLEASE do NOT insult me by comparing be to 6K. He is an insult to examiners that know how to properly examiner cases, as well as the PTO as a whole.

    Back to you for some answers. please, an not just rhetoric trying to hide from the questions. We are not on the record here & they won’t be held against you in court 🙂
    .

  30. scrappy July 26, 2009 9:33 pm

    “FWIW, I DO know how to use EAST very well.”

    Hi all, Logan is driving me to drink, again!!! If he knew how to search EAST very well he would have been able to confirm my 6/1/2006 application data with a single uber-simple EAST search statement:

    @ad=20060601

    He would know that the PTO doesn’t have a separate “WO database? A Canadian database? Is it in French or German or Korean or Russian or Taiwanese” database. Perhaps he was one of those Examiners who didn’t search foreign, or perhaps (gasp) he rose through the ranks without fully learning how to examine to become a manager or a policy maker.

    Could you all please tell Logan I meant it when I said “over and out” to him.

    Bottoms up everyone – a toast to Logan!!

    To Logan!

  31. moe howard July 26, 2009 11:31 pm

    Listen pto dudes:

    706.02(f)(2) Provisional Rejections Under 35 U.S.C. 102(e); Reference Is a Copending U.S. Patent Application [R-3]

    If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional 35 U.S.C. 102(e) rejection of the later filed application can be made. In addition, a provisional 35 U.S.C. 102(e) rejection may be made, in the circumstances described below, if the earlier filed, pending application has been published as redacted ( 37 CFR 1.217) and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application.

    Did you see that above? UNPUBLISHED! PTO always made these as long as I’ve been in this business. PTO required “interference” searches at the time of blue slipping a case. All the possible “prior art” was, and is still available to the examiners.

    Moe

  32. breadcrumbs July 27, 2009 7:23 am

    Thanks Moe,

    That was the path I was searching for.

  33. scrappy July 27, 2009 8:21 am

    Breadcrumbs, in many instances, a provisional rejection under 102(e) cannot legally be made because (non-published) inventions are held in confidence. No matter though – in such instances the Examiner is required to suspend examination (e.g., in 6 month increments) or else declare an interference (if the respective filing dates are within 6/3 months).

    Regardless of publication of the earlier application, the later application *should* not issue.

    The form paragraph for suspension of action:

    ¶ 7.52 Suspension of Action, Awaiting New Reference
    A reference relevant to the examination of this application may soon become available. Ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application.
    Examiner Note
    1. Maximum period for suspension is six months.
    2. The TC Director must approve all second or subsequent suspensions, see MPEP § 1003.
    3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.

  34. breadcrumbs July 27, 2009 10:03 am

    scrappy,

    I’m not sure I understand what you mean by “cannot legally be made”. What’s the point of 706.02(f)(2), if that section is illegal?

    Isn’t the situation also a forest for the trees issue, in that the supposition that publication as an action is indicated to be a key point, yet 706.02(f)(2) removes publication as a limitation to what is available for examiners to use (regardless if that use is for a provisional rejection or a suspension of action)?

    In other words, isn’t the original position put forth by Jules damaged, since publication is not a limitation per either provisional rejection or suspension of action?

  35. scrappy July 27, 2009 10:38 am

    Breadcrumbs, you need to read that whole MPEP section. Moe only cited part of it, and the part he cited says, “the examiner should determine *whether* a provisional 35 U.S.C. 102(e) rejection of the later filed application can be made.” It cannot always be made.

    http://www.uspto.gov/web/offices/pac/mpep/documents/0700_706_02_f_2.htm

    The most common instances when a provisional 102(e) rejection can be made are when 1) there is a common inventor (but not common inventive entities) in the two applications, and 2) there is a common assignee for the two applications.

    Now in reality, these two instances will cover about half the instances where and Examiner would want to make the provisional 102(e) rejection. It is not uncommon for an inventor or applicant to improve or modify their own previous inventive design, and to file claims in the newer application that might arguably overlap with the disclosure in the previous one. This is unfortunate but true.

    In hot technologies, two different applicants or inventors might also find themselves in this situation. If 18 months have not yet elapsed from the filing date of the first app (and the filing dates are more than 6 months apart), the Examiner would suspend examination (in the second app) to let the first app publish. If a non-publication request was submitted in the first app, the Examiner would want to suspend examination until the first app either issues as a patent (and becomes available under 102(e) as a reference) or is finally abandoned (at which time the second app *might* issue, depending on the facts).

    What Jules and Logan seem to be intimating is two-fold:

    1) Prior to 2001 when the allowance rate was 70%, a significant fraction (say 70% minus today’s 50% allowance rate) of the allowed applications should not have been issued as patents and would not have been allowed if only the Examiners knew about prior filed US applications that had not yet published.

    2) The PTO is (and has been) incapable of effective “interference” searching without the PGPUB database.

    Both are false. (The PTO may be incapable *today* of effective interference searching without PGPUBS, but it has been becoming more incapable of many other things too, since the sophomores took over. This is the heart of the systemic problem.)

    Jules’ and Logan’s theories are simply not supported by any facts. It’s all hand gestures and conjecture – some (new) way of saying, “It’s not the PTO’s fault!” I CAN ALMOST GUARANTEE NEITHER OF THEM WAS WORKING IN THE PATENT FIELD PRIOR TO 2001 TO SEE THE SUPPOSED “CHANGE” THEY ARE NOW SO PARTICULARLY DESCRIBING. Their comments seem sophomore-ish, yet they give to themselves senior level credibility. I have been checking the validity of issued patents since 1991, so I know a little about what change(s) AIPA and RCE practice has brought. There have been some changes, many of those very significant, but none of what they allege.

    Gene’s theory is supported by the facts.

  36. ~~Logan~~ July 27, 2009 11:02 am

    Scrappy,

    WTF are you talking about??

    You keep changing your story. You NEVER said earlier the things that you said in the post of July 26th, 2009 9:33 pm.

    You DID NOT clearly state that you were just looking at a single date. That is REALLY sloppy data-finding. One datapoint does not prove anything. If you did, yes it is easy to replicate. However, it is meaningless.

    And I NEVER said that the PTO has WO database. Try improving your reading. I was stating that all different databases need to be searched for all different countries & entities to find the corresponding foreign/international patents that you were spouting about.

    And we are all STILL waiting for you to respond to the facts. Obviously you can not, so you are pulling the usual lawyer B$ and attack the person providing the facts and then run away scared since you are wrong.

    I used to think that you were reasonable and could discuss things based on other posts here & in other forums. Apparently I was wrong. Too bad. It would be nice is people out there could discuss things without resorting to attacking the the other people. THIS type of attitude is what gives you attorneys a bad name & is a large part of the reasons for bitterness between examiners & attorneys. Sad & unfortunate…

  37. scrappy July 27, 2009 11:36 am

    “THIS type of attitude is what gives you attorneys a bad name & is a large part of the reasons for bitterness between examiners & attorneys. Sad & unfortunate…”

    Logan, I apologize if you were offended by my “post of July 26th, 2009 9:33 pm”, and in advance for any other comment I might have made that hasn’t quite posted yet.

    I hope you know it has been the PTO that has refused to work with attorneys, not the other way around – we patent applicants have been strong-armed by you (under the direction of your Director) for the last 8 years, but that has made us stronger as well. Don’t be so quick to blame me for the bad “attitude”, and don’t assume you are on the right side here – please get your own house in order first, and realize some of what the PTO has done to both the patenting public and the bar during the previous administration. America needs a responsive government.

    George Bush and John Dudas could have learned from Learned Hand:

    “What then is the spirit of liberty? I cannot define it; I can only tell you my own faith. The spirit of liberty is the spirit which is not too sure that it is right; the spirit of liberty is the spirit which seeks to understand the mind of other men and women; the spirit of liberty is the spirit which weighs their interests alongside its own without bias….”

    This the PTO has not been doing for 8 years.

  38. scrappy July 27, 2009 12:03 pm

    Hey Gene, could you please delete a comment of mine that might be in the moderation folder, if you haven’t already? (and I can re-address breadcrumbs’ question if appropriate). Thank you.

  39. ~~Logan~~ July 27, 2009 12:18 pm

    Scrappy,

    I will accept your apologies.

    If you have read any of my previous posts on other topics here, you will see that I have not supported most of what the Jo(h)s’s (Dudas, Doll, Love) did when in power. 2nd pair of eyes, personally, being the biggest of many sins. Examiner’s are supposed to allow applications unless there is a legitimate grounds of rejection. That was always the way I worked & the way I trained examiners that reported to me. B$ rejections are a waste of time & money for both sides. Also, many (particularly newer) examiners do not know the art and only do text searches based on claim language. They find a few words that are the same as claimed and make a bad rejection. Applicant argues & it repeats. Not how things should be done. If they learn the art, they can do better searches & apply better art & this makes for a better examination for all.

    So, I do agree that the PTO has a lot to get in order. However, I do disagree with you that applicants/attorneys are blameless (I think that is what you are indicating, anyhow). Back in the 80s & early 90s, applicants/attorneys (from here on just “applicants” for brevity) were more willing to work with examiners and were also filing claims that were closer to being in condition for allowance. More recently, claims are filed that are excessively broad. And when I say “excessively broad” I do not mean that they “look too broad”. I mean claims that read on admitted prior art in the spec or even on whole subclass definitions. Things that the applicant “should” know are clearly not allowable based on what is already out there.

    Now, to some extent, I understand why this is done. Various court decisions have limited applicants’ ability to amend and still get the doctrine of equivalents, so more and broader claims are filed. Also, some applicant’s (a small %, but still significant in the rejection rate and the backlog building up) are using patents as lottery tickets hoping to get something very broad allowed & then being able to get licencing agreements from small companies (I know of a few that have succeeded in this, as I am sure you do). There are a lot of other legitimate, as well as some non-legitimate reasons, for applicants to be reluctant to agree to examiner’s amendments or to amend on their own to overcome prior art.

    So, there is plenty of blame to go around. One thing that bothers me is that attorneys/applicants refuse to accept any share of the blame. While this “blame” may be “necessary” based on court decisions and legitimate business factors, the attorneys/applicants (and courts, can not forget them!) are still partly responsible for the backlog & where we not stand.

    PS, I would rather not get into the political discussion as I am sure that it is not only off topic but I will probably be in a minority & get flamed 🙂 I didn’t agree with a lot of what Bush did, but I don’t think I have agreed with anything Obama has done yet (closest thing was his nomination of Kappos who at least has real patent experience).

  40. Jules July 27, 2009 12:58 pm

    Moe, you almost had me for a second there, but breadcrumbs effectively said what I was going to say.

    To be clear, further in that section, the pertinent part of 706.02(f)(2) reads:

    “II. COPENDING APPLICATIONS HAVING NO
    COMMON INVENTOR OR ASSIGNEE
    If there is no common assignee or common inventor, the
    confidential status of applications under 35 U.S.C. 122
    must be maintained and no rejection can be made relying
    on the earlier filed application as prior art under 35 U.S.C.
    102(e). If the filing dates of the applications are within
    6 months of each other (3 months for simple subject matter)
    then interference may be proper. See MPEP Chapter 2300.
    Otherwise, the application with the earliest effective U.S.
    filing date must be allowed to issue. After the allowed
    application is published, it can be used as a reference in a
    rejection under 35 U.S.C. 102(e) in the still pending application.”

    This part of the MPEP is excerpted from the pre-AIPA, pre-1999 edition. Also, here is 35 USC 122 from the same edition:

    “35 U.S.C. 122 Confidential status of applications.
    Applications for patents shall be kept in confidence by
    the Patent and Trademark Office and no information concerning
    the same given without authority of the applicant or
    owner unless necessary to carry out the provisions of any
    Act of Congress or in such special circumstances as may be
    determined by the Commissioner.”

    35 USC 122 has since been changed due to the introduction of PGPUBS.

    Breadcrumbs was correct in saying it would be illegal to make a provisional 102(e) rejection unless for the purpose of interference. Interference is not a common occurence. Further, MPEP 706.02(f)(2) is only for unpublished patent applications that anticipate the claims at issue. Anticipation is much more difficult to maintain than obviousness, which further diminishes the impact.

    Again, I can’t seem to stress this enough… Examiners have to consider much more pertinent art, in the form of PGPUBS qualifying under 102(e) after AIPA-1999. At the very least, this provides rationale for increased time per examined case. And if you’re tired of the arguments regarding an “artificially lowered allowance rate” then it provides an solid alternate cause of the “problem” which diminishes the blame game.

    PS: there was a note above about RCE providing initiative for examiners to stretch prosecution. RCE’s were also introduced with AIPA-1999 (please correct me if I am wrong). I do not dispute this, however an argument to enact change in the patent system likely will not hinge on this possibility. The reason is because it is clearly a subjective consideration, unlike the objective facts provided above.

  41. scrappy July 27, 2009 1:13 pm

    “However, I do disagree with you that applicants/attorneys are blameless (I think that is what you are indicating, anyhow).”

    I do not think applicants/attorneys are blameless. Far from it. I think anyone who sees the broad claims that are set forth in many PGPUBS knows that. But the PTO is woefully ineffective in addressing (or *policing*) the broad claim problem, and that gives incentive to pursue them….

    “I mean claims that read on admitted prior art in the spec or even on whole subclass definitions.”

    Three years ago, I had to address a PATENT whose claims read on a subclass definition – of course that subclass wasn’t searched. (Honest, an old copy of the subclass definition was used as anticipating prior art.)

    Why on earth isn’t the PTO addressing this problem?

    Old 37 CFR 10.18 used to require “the *claims and* other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law.” Filing an application with unwarranted claims could have been punishable as attorney misconduct under regulation (to my knowledge it never was though). Then in 2008, some PTO regulator deleted the “claims and” in 37 CFR 11.18, so that avenue may be foreclosed. The current reg makes no logical sense….

    P.S. I haven’t agreed with anything Obama has done yet either (well, I actually don’t mind Sotomayor considering who we might have gotten instead). He is Bush III (that’s a compliment everyone, to both Obama and the Bushes), a power grab for the government….

    P.P.S. I was wrong about you, Logan – I know now you have been around longer than since 2001. Apologies again – your comments have never (in the past) appeared to me to be sophomore-ish, so maybe I am mis-understanding your support of Jules’ position.

  42. scrappy July 27, 2009 1:38 pm

    “Breadcrumbs was correct in saying it would be illegal to make a provisional 102(e) rejection unless for the purpose of interference.”

    That is not true. Please re-read the MPEP section.

  43. Jules July 27, 2009 2:15 pm

    scrappy, predictable, I knew you would jump on that. I was using the broad definition of illegal with respect to 35 USC 122. What is your purpose, man? Are you here to nitpick my grammar, or are you going to help develop the facts?

  44. moe howard July 27, 2009 3:10 pm

    numbskulls! 🙂 you stated they never can be used. never say never. you were wrong. in any event, excluding the very small percentage of applications that file request for non-pub, the avenues to delay prosecution (until publication) or to invoke an interference also are available. Thus, all possible “prior art” would be available.

    problem is, the pto does not ahem, enforce these avenues. why? because it involves extra work. they can’t admit it either.

    finally, don’t tell me the artificially high rejection rate (low allowance rate) was not caused by the rotten culture that existed over there for many years. i do know why and know what is about to happen. dudes, get on the new crazy train and think blue!

    moe

  45. scrappy July 27, 2009 4:17 pm

    Jules, I’m going to help develop the facts. And might possibly nitpick your grammar while I’m at it. Does that sound fair?

    Provisional 102(e) rejections are often made where there is a common inventor or assignee. 35 USC 122 doesn’t apply with respect to the common inventor or assignee (i.e., with respect to “the applicant or owner”). In those two cases, it is not illegal to make provisional 102(e) rejections, and those cases are of course not for the purpose of interference.

    I. COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON INVENTOR OR ARE COMMONLY ASSIGNED
    – provisional 102(e) rejections proper and not illegal under 35 USC 122(a)

    II. COPENDING APPLICATIONS HAVING NO COMMON INVENTOR OR ASSIGNEE
    – provisional 102(e) rejection usually not proper and usually illegal under 35 USC 122(a). (An exception can be made here if the unpublished application is identified in a separate US Patent, PGPUB, or published PCT application by the applicant or owner of the unpublished application; 37 CFR 1.14(a)(1)(iv). Then the unpublished application is no longer secret in the US and a provisional 102(e) rejection, using the non-secret unpublished application as a reference might legally be made although the MPEP does not state this explicitly. I believe it has not yet been decided, post-AIPA, if an unpublished US application is in fact an “application for patent” under 35 USC 102(e)(2) if the unpublished application cannot fully support at least one claim in at least one issued (or eventually issued) patent under 35 USC 112. That apparently would, or at least could, make the 102(e) rejection using a non-secret unpublished application a “provisional” 102(e) rejection until such a patent issues….)

  46. Jules July 27, 2009 7:04 pm

    Yes, that sounds fair. I apologize if I react to harshly or swiftly. I admit I get a fair amount of education just conversing on these blogs.

    Regarding provisional rejections under 102(e) using 706.02(f), I must say these types of rejections are, in my experience, extremely rare. I also assume they were fairly rare pre-AIPA. Therefore, we can just say these types of rejections are so rare as to be insubstantial in the overall scheme of this topic.

    Rereading Logan’s posts above, he/she has made excellent points regarding the substantial evidence of increased PGPUBS, provided good statistics, and even clearly described the impact of such in the environment of a growing backlog. So, to use the terminology above, I would say this issue is another red herring.

  47. scrappy July 27, 2009 7:29 pm

    Jules, well you certainly don’t have a monopoly on reacting too harshly or swiftly – likewise, I apologize.

  48. breadcrumbs July 27, 2009 9:11 pm

    Jules,

    It’s nice to see your education and I wonder if you can influence the examiner known as 6, whose erstwhile reaction to any dialogue is to redouble his position, even when that position is clearly inaccurate. He should start holding you up as a model.

    However, I would not dismiss the 706.02(f) avenue based on its use (or relatively rare non-use) – especially when the topic is Law (as opposed to following the Law). Whether a path is available is a different matter than whether that path is taken. Also, I did not posit that something was illegal, I asked how a section seemingly at odds with another section was legal. Unlike certain other individuals that will go unnamed, I rarely like to tell, and prefer to ask.

    Scrappy,

    What happens in your posts above in the “in between” time before a patent issues? Even given that pendency has increased, (notwithstanding the post at the train wreck), prior art that is secret and unpublished WAS available to the examiners (to Moe’s point – all prior art is, was and always has been available – the how to use that art may have evolved). How was the balance between protecting the unpublished applications and the due process to be provided to secondary applications maintained? Was there a bit of “trust us, you’ll have to wait, prior art is imminent”? I have seen suspended examinations (the longest one I’ve seen was about 2 1/2 years), but do not know how prevalent they may have been.

  49. scrappy July 27, 2009 10:26 pm

    “Was there a bit of “trust us, you’ll have to wait, prior art is imminent”?”

    Yes, exactly. That’s why it require[d/s] a Group Director’s signature – because we wouldn’t inherently trust the Examiner who may not want to work on the 200-page application. The 6-months (or whatever) that is suspended gets tacked on to the end of the patent term, so I don’t think there is really a due process consideration. I’ll assume there is no Constitutional right to a “speedy patent”… though I suspect the government may not take the patent term by delaying 6 months without compensating by adding 6 months at the end of the term, well if a patent application (that would issue in the future) is a vested property right, which the Tafas case may address – the PTO seems to think it isn’t.

  50. Jay July 28, 2009 3:29 pm

    This mess was created in the nineties when Congress decided to transfer monies raised by the patent office into the general fund to avoid raising taxes. Instead they raised fees that function identically to a tax but does not have the stigma. When it walks like a duck and talks like a duck it must still be a tax, but only a tax on individuals and corporations that use the patent office. With this transfer of funds, the patent office was not able to hire the Examiners it needed, they became backlogged and have been ever since.

    When will the madness end? When the two parties that run this country re-learn the fine art of compromise that was lost in 1994 or when they are both kicked out of office and replaced by politicians who are more interested in this country they are elected to serve than the party they happen to be a member of. Short of that, no solutions on the horizon…

  51. Jules July 28, 2009 4:22 pm

    Come on, USPTO and POPA, this is a fast-track avenue to a short-term production adjustment which can unlock an extra five million dollars in fees. =)

    “The production goal review got rolling after Congress
    inserted a line in the 2009 Omnibus Appropriation Act
    stating that “of the amounts provided to the USPTO within
    this account, $5 million shall not become available for
    obligation until the Director of the USPTO has completed a
    comprehensive review of the assumptions behind the patent
    examiner expectancy goals and adopted a revised set of
    expectancy goals for patent examination.””

    See POPA’s July 2009 newletter, page 2: http://www.popa.org/pdf/newsletters/2009_07.pdf

    Or is is bad timing with the budget situation to actually propose something that appears unintuitive, but in actuality it is logical?

  52. Seeking confirmation (not the SCOTUS type) July 28, 2009 5:08 pm

    Is it just me, or am I seeing a sudden increase in the number of notice of allowances? Moreover, an examiner just told me that the “second pair of eyes” has ceased and the examiners have been instructed to look for allowable material. Can anyone else confirm this?

    Forget caselaw, money rules in getting your applications allowed.

  53. moe howard July 28, 2009 11:29 pm

    seeking confirmation, I haven’t seen it. In fact, today I received a non-final action after filing an appeal. This re-opened appeal was filed after a pre-appeal brief conference request was submitted and the conferees “decided” that the case should proceed to the board. my head is spinning, and my clients are pissed!

  54. Noise above Law July 29, 2009 8:07 am

    Jules,

    Thank you for the link, but you will have to read more critically – the five million is NOT extra. It is a part of the USPTO appropriations package, a part of what the Office would have had anyway. And not only is that 5 mil NOT extra, by Congress tying a string to it, the Office may be denied that five million. Instead of +5, or 0 as the case may be, you will likely be -5.

    I haven’t read the POPA newsletter before, so it may be the journalistic style, but the description of the negotiations between POPA and the Office does not look good for that 5 million being released. “When POPA offered counter proposals, the agency said no and gave no alternatives of its own.”

    It is NOT an encouraging sign that POPA has to “hammer” out an agreement to even be involved as a partner and stakeholder in the process.

    The Congressional mandate was for a COMPREHENSIVE review and adoption of revised goals. I’m not sure that an interim goal adjustment would have even loosened the purse strings (POPA may have been barking up the wrong tree), and given that POPA believes that the comprehensive study would likely take multiple years, the likely impact may be further aggravated if Congress applies additional pressure by tying more funds in next year’s appropriation bill.

    Perhaps the Office should divert its power-grabbing time and energy to fixing its house rather than rewriting the law to fit its agenda.. How many man-hours went into the efforts on the new rules? As much as Gene likes to think that the Office has changed its tune, you just don’t see different music in this critical area. Congress is dropping hints that the Office needs to redirect where it spends its resources, but the Office keeps marching to its own drums.

  55. An Examiner July 29, 2009 10:21 am

    moe howard:

    I don’t think you understand the purpose of pre-appeal conferences. The purpose is to ensure that the issues presented by the applicant are appealable. It’s not to determine whether the examiner’s actions are right, wrong, or even reasonable. Pre-appeals were designed because the BPAI was kicking back down a lot of garbage (mainly because applicants were appealing unappealable issues and the examiner wasn’t catching it).

    The examiner will generally consider applicant’s arguments on their merits in the pre-appeal stage, just to make sure he hasn’t screwed up royally. However, if you present persuasive arguments in a brief that are not in the pre-appeal, or expanded upon them in comparison, then it is perfectly reasonable for the examiner to find the new arguments persuasive, while the old arguments were not.

  56. scrappy July 29, 2009 10:39 am

    “the Office may be denied that five million. Instead of +5, or 0 as the case may be, you will likely be -5.”

    The other possibility (one that might have been likely under Dudas) is the PTO will conduct a $750 comprehensive study on production goals in order to get access to the $5 million and then base the next 20 years of agency operation on the production goals produced by the $750 study .

    Not a good string for Congress to apply to an agency in need of immediate cash which should be free (and encouraged) to address its future operations without being presently penalized for so doing, in my view.

  57. Jules July 29, 2009 12:43 pm

    Noise: “the description of the negotiations between POPA and the Office does not look good for that 5 million being released.”

    I read the artical pretty critically, so I understand. I don’t always write in the most legally proper way. My statement was more of a “check this out.”

    I was not involved in the USPTO/POPA discussion, so I don’t know exactly what proposals POPA offered, but for some reason I doubt it was regarding PGPUBS increasing the art available and creating more work for examiners. If it were, then PTO management might have been convinced or at least intrigued. As far as I know, me and the others on these blogs lately have been the only ones drumming up support. There is a downside to anonymous blogging – not everyone reads it, even if it does make sense.

    I know the locked funds belong to the USPTO. Unfortunately, the amount of money it will take to unlock those funds will probably be more than $5 million. That is why I said they should just take this PGPUB factual basis position and temporarily adjust the production system. I think the facts speak for themselves and are fairly “comprehensive.” I guess it depends on your definition of “comprehensive,” but maybe Congress would accept a staggered approach. First, adjust the standards based on at least one factual basis right in front of you, then weight more options.

    If Congress doesn’t release those funds because the standard of “comprehensive” is too high, then this process will take many years. What kinds of studies are necessary to be comprehensive? There will be a lot of subjective factors, which leads me to believe the outcome will be pretty much worthless anyway. If the study is anything like the previous one, then they will see how long it takes a GS-12 examiner to successfully complete their job. Unfortunately, the data may be skewed because of the unreasonable requirements currently imposed on them. They perform their job just so they can meet those requirements.
    Consider the amount of voluntary overtime they put in to meet production.

    That’s all I have for now…

  58. Jules July 29, 2009 12:43 pm

    “the description of the negotiations between POPA and the Office does not look good for that 5 million being released.”

    I read the artical pretty critically, so I understand. I don’t always write in the most legally proper way. My statement was more of a “check this out.”

    I was not involved in the USPTO/POPA discussion, so I don’t know exactly what proposals POPA offered, but for some reason I doubt it was regarding PGPUBS increasing the art available and creating more work for examiners. If it were, then PTO management might have been convinced or at least intrigued. As far as I know, me and the others on these blogs lately have been the only ones drumming up support. There is a downside to anonymous blogging – not everyone reads it, even if it does make sense.

    I know the locked funds belong to the USPTO. Unfortunately, the amount of money it will take to unlock those funds will probably be more than $5 million. That is why I said they should just take this PGPUB factual basis position and temporarily adjust the production system. I think the facts speak for themselves and are fairly “comprehensive.” I guess it depends on your definition of “comprehensive,” but maybe Congress would accept a staggered approach. First, adjust the standards based on at least one factual basis right in front of you, then weight more options.

    If Congress doesn’t release those funds because the standard of “comprehensive” is too high, then this process will take many years. What kinds of studies are necessary to be comprehensive? There will be a lot of subjective factors, which leads me to believe the outcome will be pretty much worthless anyway. If the study is anything like the previous one, then they will see how long it takes a GS-12 examiner to successfully complete their job. Unfortunately, the data may be skewed because of the unreasonable requirements currently imposed on them. They perform their job just so they can meet those requirements.
    Consider the amount of voluntary overtime they put in to meet production.

    That’s all I have for now…

  59. HiringFreeze July 29, 2009 2:45 pm

    “We need more funding for the Patent Office on a large scale to allow the Office to hire new examiners, and we need to call back all willing retired examiners and PTO employees to help. Retired examiners can be paid to dive into the backlog, and other can mentor new hires on the job, leaving those experienced examiners to really dive into the backlog and not have to mentor, train or supervise new hires. Perhaps some retired members of the Board of Patent Appeals can be brought back to dive into the backlog of appeals now pending. Something needs to be done, and it must start with funding.”

    Good leaders can always captalize on bad situations. This is the best time for PTO to close the gap of backlog and hire best talented professionals. The strength of PTO is at PTA (Patent Training Academy) becasue it trains new examiners get ready for the job. It generates power to get the job done. Expand the PTA, and it will have positive returns for PTO.

  60. moe howard July 29, 2009 3:44 pm

    moe howard: “I don’t think you understand the purpose of pre-appeal conferences. The purpose is to ensure that the issues presented by the applicant are appealable. It’s not to determine whether the examiner’s actions are right, wrong, or even reasonable. Pre-appeals were designed because the BPAI was kicking back down a lot of garbage (mainly because applicants were appealing unappealable issues and the examiner wasn’t catching it).”
    ——
    say what? this was a single issue 102 – claimed element not there – in fact, reference taught the opposite of what was claimed! Same argument! The purpose was to weed this crap out. We paid for an appeal that the PTO blew off!! This was the garbage you speak of!!!!!!! sorry about all the exclamation points!!!!!