I think we are on the same page. I definitely don’t want to suggest that examiners be moved into areas that are vastly different.

Based on my own experience I can tell you that patent examiners continue to reject applications based on Bilski, and have done so even knowing the Supreme Court accepted the case. I have a case now that requires a response by the beginning of February where all claims have been rejected based on Bilski. So I will respond, and maybe even get a final rejection before SCOTUS issues its decision. Then after Final I won’t be able to do much even though the Supremes change the test making the First and Final Actions inadequate. So I will have to file an RCE. In the process I have wasted time and resources, and the Patent Office has had an examiner devote time only to have the Supremes render the entire examination moot. So what is going on presently will not dig into the backlog, it will just perpetuate it and make it worse.

I like the idea of staying Bilski rejections pending an outcome, but that is not what is happening. So in this area most if not all of what examiners are doing presently will just have to be redone once we have a decision, which seems like a waste. Since Bilski was handed down by the Federal Circuit this area has speeded up a lot, which seems to suggest they are just making Bilski rejections quickly and clearing out the backlog. So much wasted time will make the problem worse once we have a ruling from the Supremes. It also forces clients to waste money, paying attorneys to respond and keep actions pending. So the cost of continuing to act like Bilski is and will remain the law are enormous.

I am not concerned with extending the Bilski related application pendency, that has to be while we wait for the Supremes. In the meantime, to the extent possible, examiners should not be taking up cases that require a Bilski 101 rejection and could be reassigned to other electronics and systems areas that are closely related to assist in weeding through those cases, decreasing pendency there. Then when a decision from the Supremes comes the USPTO could give applicants an opportunity to amend claims to conform with whatever the Supremes announce, have the case considered then and either quickly allowed or quickly rejected.

I think a thoughtful workflow here would streamline the process, decrease costs for clients, not waste examiner time and help the backlog elsewhere in the meantime.

-Gene

-Gene

While an examiner can examine areas that are closely related – emphasis on closely – to go from areas not so closely is not a good idea. I am not saying that is what you are suggesting, just setting parameters for this discussion.

In the past, particularly in the later 80′s early 90′s, they did move art to examiners in drastically different areas. The results were mixed, at best. The better examiners would talk with examiners in the other art & try to get guidance for searches & allowability, which of course took time from those other examiners. The lesser examiners would just do whatever to get rid of the cases. I had one friend that worked in switches that got about 100 cases from the computer area (old class 364). Of course, it was a struggle for him. There were many other instances like this that I am aware of.

And then you also need to consider that the POPA agreements require that when examiners are given a different art to examiner they are supposed to be given a learning curve to help accommodate their learning of the new art. Something like a 25% curve for up to 6 months, IIRC. Even if the arts are close this needs to be done.

A further point is if a 1st art/class has a lot of Bilski-type issues it would be reasonable to expect that the “closely related” art would probably also have similar issues, which makes the suggestion less useful.

Now, on top of all this, probably almost all of the business methods, as well as most of TC 2100, as well as at least half of TC 2600 & 2400 would have their cases not be examined (i.e., skipped/ignored) for the next 6 months because the “might” have a 101 issue. Since it is not usually easy to determine if a possible 101 issue exists in a case until it is examined, anything other than skipping ALL the cases in the areas where 101s often appear would be a waste of time. Starting a case & then putting it aside is a waste of even more time. As I understand your suggestion, you want ALL the cases just skipped, right?

What your suggestion would do is just rearrange the order cases are worked & probably do little to actually reduce pendency. Eventually all the cases would still need to be examined by the same number of examiners and the cases would still need to be evaluated under 101 with whatever guidance comes from the Supremes.

Personally, I think the better course of action would be just to ignore the whole 101 issue until the Court makes their decision. If it is not raised by the examiner until then, no time is wasted & cases can still move forward in the proper course & not taken out of order. A form paragraph could be created to say that any 101 issue is stayed until the Supreme Court decision in Bilski is handed down. For any cases that are ready to be allowed, at that time the examiner can take a look & determine if a possible 101 issue might be present & have the case suspended until the decision comes down & notify the applicant of such.

While I agree that making 101 rejections & analysis “may” be a waste of time, just skipping all the cases where it may exist is not reasonable or practical. I think this would be a better solution as prosecution can still move forward & time/effort is not wasted. Like I said above, too often I have seen examiners be given cases from different arts & usually the results have been undesirable, even for relatively close arts.

~~Logan~~

Did you read what I wrote? Obviously not. You lack time to explain because you cannot explain why I am wrong and my suggestion will not work. Everyone knows it will work, if they are honest.

It is recklessly stupid to have examiners continue to spend any time on Bilski matters. Every minute is a minute wasted because the Supreme Court will change the law and all the work done will need to be redone, either in the same application, in an RCE or on appeal. You act like examiners are stupid and cannot move. They can and do move, and that is what should be done now.

Of course, you completely ignored what I wrote above about asking a bio/chem examiner to move to electronics. How convenient. You have an agenda and rather than debate fairly you mischaracterize and act as if you know better. Those in the know understand your approach is nothing more than head in the sand.

-Gene

I thought of Melndez-Dias as a “technology” case more than a 6th amendment case – certainly it was in the details. It was saddened in reading those opinions about how little they knew about how science really works, that it is not as absolute as is popularly thought and that there are plenty of room for mistakes to be made. Maybe I was taking that as a hesitancy on their part to decide quickly on something that I thought was cut-and-dried.

Patent examiners do develop specialties, but typically they are not so specialized that they could not be reassigned to other areas. Examiners that stay at the USPTO for a career will move from Art Unit to Art Unit, typically in areas that are closely or at least tangentially related. I have also heard stories from examiners that have moved from area to area say that the USPTO will announce they are looking for examiners to move into a certain area and if interested they move. For example, John White is a Civil Engineer and once upon a time the Office was looking for folks in the automotive filed. Those who know John know he is a massive gear-head and huge into automotive technologies as a hobby. So he moved quite easily. I suspect that many, if not most, of the examiners who operate in the Bilski areas could move into other tangentially related areas, such as electronic devices for example. The examiners don’t have to know enough to invent in those areas, just enough to understand and be a critical observer. Certainly you wouldn’t want someone with a bio/chemical background to move into an electrical field, but most examiners are likely well capable of moving into fields based on personal experience or inclination.

KSR was issued in the April/May time frame. I don’t know that it will go to the end. I think they typically issue patent issues earlier. The later the decision the worse I think it will be for the US economy, and the worse for software. The case you mention related to the Sixth Amendment right to confront the witnesses. Constitutional issues are almost always decided in June, or at least late in the term because the Court takes as much time as possible to consider the ramifications. There really are no Constitutional issues in Bilski, so I expect a decision in late March through early May.

-Gene

Don’t examiners have areas that they specialize in? (Sorry, I don’t know. I’m just a PHOSITA.) If so, how practical would the suggestions be?

On the side, my bet will be that this will just about the last decision released. It seems to me like the SCOTUS takes its time on scientific & technology issues – last term, Melendez-Dias v. Massachusetts wasn’t released until late June, despite being heard in mid-November.