Comments on: The Time for Talk has Passed, So Lets Get Started

By: Gene Quinn

Gene Quinn — Thu, 30 Jul 2009 21:30:29 +0000

RES-

Can you give me some kind of general idea about how much longer a case takes you with extra claims? What if there were 30 total claims, for example? I know it varies widely probably, but is there any general rule of thumb or guidance you can provide? The more factual information we can get out there the better. I agree with you. Examiners play a vital role, are professionals and should be treated like professionals, including with respect to production goals.

Thanks.

-Gene

By: RES-Former Examiner

RES-Former Examiner — Thu, 30 Jul 2009 20:45:35 +0000

As a former examiner, I think one way to help with the quality of examination is to give time credit to the examiner for cases where the applicant pays additional money for claims over the standard 20 total /3 indep. claims. As it is, the office (actually gen fed fund) is the only benificiary because they pockets the extra fees, but gives the examiner no extra time for the examination. Examiners would be more incline to search/examine cases with a number of claims over 20 if they received extra time credit for doing so. Just a thought.

By: MBT

MBT — Wed, 29 Jul 2009 16:25:48 +0000

As a former examiner, I can tell you that the PTO, for the most part is oblivious to much of the needs of inventors and their representatives. The patent system exists to promote commerce and innovation. Bob Spar’s comments are off-base and typical of a bureaucrat that has forgotten their stakeholders. I like Bob and think he does a good job and am frankly shocked to see that he too, has drunk the John Doll kool-aid. Thank you for your postings, as they have been very fair to the PTO and I must say, you have bent over backwards to make sure that your postings are accurate. I know John Doll fairly well and your characterizations of him are very accurate. Hopefully, common sense will prevail. Your plans seem very timely and if the PTO listens, may even hep nudge things along… Thanks for your efforts!

By: OldTimer

OldTimer — Wed, 29 Jul 2009 16:08:42 +0000

Gene–count me in. You know where to contact me.

By: New Here

New Here — Wed, 29 Jul 2009 15:45:15 +0000

The USPTO is broken ( thank you for saying it ) and being so, too many “bad” patents are gong through. Let me clear up what I call a “bad” patent: Patent with all, in my opinion intent, to cover some/all of underpinning technology/ies through claims that are written to extend the reach of the focus of an idea, an idea that is the only subject of the patent application and changes that have been talked about do not address this problem. Knowing well the ball park, here, Iam swinging in, having the knowledge though that going after intent is not a path for a fix. However, action(s) are clear, though litigation is a tool and can not be avoided at times no matter what objections, if litigation levels in the patent world are “too” high, is a telling sign, that the USPTO can have an impact on if done right. Being right or having the “correct” answers to the problems is far from the point here I beleve, because the understanding of the problems not unlike the proposed answers to them are subject to opinion based on who you talk to. The “right” the “correct” not answers at all when talking of a broken patent system, has no meaning, though a patent system continues on working for those best served by it, as is. For sure, the USPTO should not continue to work for some nor be in their control, and if so, this is one change that would give meaning to answers to other problems. As it is now I have to say I see the objections to/about changes being threats, not what is best for a working PTO.

By: TT

TT — Wed, 29 Jul 2009 14:26:20 +0000

“The problem up until the beginning of 2009 was that the Patent Office was not interested in doing anything that was actually calculated to solve the problems at hand and sought to completely absolve itself of any responsibility for the crisis. But it seems the winds have shifted, and maybe the time is now to once again offer to engage with the Patent Office to create solutions.”

I am not sure anyone is in position to judge another persons motives. While I agree the changes suggested were unlikely to have any beneficial effect, or much effect at all, I think it was due to incompetence, not evil, on the part of the PTO.

In the chemical area, the largest problem causing the examination system to bog down is the breadth of the claims and the shear number of claims. Examiners simply do not have the time under the present count system, to make any kind of intelligent enablement analysis. So they strike back using whatever shortcuts are available.
TT

By: Paul F. Morgan

Paul F. Morgan — Wed, 29 Jul 2009 13:39:51 +0000

Congratulations, this is a great post. I fully agree that now is the appropriate time for the patent profession to start providing its own, realistic, proposed solutions to PTO-bar problems, including realistic rule and procedural changes.
Some are very easy fixes. For example, instead of the PTO trying to impose drastic draconian rule limitations on everyone, including only a single RCE and two continuations, the PTO could simpy apply, against the relatively few serial-multiple-continuation abusers [aka "submariners" ] its existing authority under the case law of “prosection laches.” Also, the PTO could use its existing interrogatory authority under amended 37 CFR 1.105, and provide shortend response times for such excessive pendency cases. Most importantly, simply reassigning grossly excessive total pendancy applications to examiners who will work on then instead of avoiding working on them, and be rewarded for doing so.
Likewise, by far the most serious problem with patent reexaminations is also easily fixed simply by re-assigning a few dozen additional competent examiners to the PTO reexamination team to act on them promply [as the reexamination statute requires]. Especially , reexaminations of patents in extensive expensive litigation being inexcusably delayed in the PTO for years.