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.

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…

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…

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.

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.

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.

Forget caselaw, money rules in getting your applications allowed.

“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?

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…

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.

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.

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.

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….)

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

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

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.