What the Patent Office Refuses to Understand

By Gene Quinn
July 12, 2016

elephant-in-room-700b

 

EDITORIAL NOTE: After publishing this article I received quite a bit of feedback suggesting the allowance rates reported below seem inflated. Upon closer review, and when you focus on a post-Alice timeframe, the allowance rates are much lower. For more on that follow-up to this article please see: Where Patent Applications Go to Die.

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Yesterday the United States Patent and Trademark Office announced a new pilot program dubbed the Post-Prosecution Pilot Program. The goal for this Post-Prosecution Pilot Program is twofold: (1) reduce the number of appeals (or at least number of issues on appeal); and (2) reduce the number of Requests for Continued Examination (RCEs).

I have absolutely no problem with the Patent Office trying to streamline patent prosecution. I think whatever can be done to make the patent prosecution process less complicated should be done. It is certainly proper for the Patent Office to attempt to make the patent process more efficient, less cumbersome and faster. Having said that, this new pilot program feels a lot like rearranging the chairs on the Titanic. There is an elephant in the room, which the Patent Office has ignored for years. It might feel good to try and bring applicants and patent examiners together to make appeals and RCEs necessary, but unless and until the Patent Office does something about recalcitrant patent examiners this effort may wind up being much ado about nothing.

As I always do when I broach this topic, let me state the obvious: The overwhelming majority of patent examiners are dedicated, hard working, highly educated, and motivated professionals. But even a small percentage of bad eggs can cause real pain within certain sectors of the patent community, particularly when there is a cluster of recalcitrant examiners, which seems to be the case.

As of the end of May 2016, there were 8,092 patent examiners employed at the Patent Office. As you might expect with any group that large, however, there are some that are not any of those things. Indeed, some patent examiners openly brag to patent attorneys and applicants that they have not issued a patent in years. Nothing is ever done about those small minority of recalcitrant patent examiners, which is one reason it is hard to take Patent Office initiatives to streamline patent prosecution seriously.

Let’s stop talking in hypotheticals. On Monday, July 11, 2016, using LexisNexis Patent Advisor®, I created the table below, which lists twenty-two Art Units within Patent Technology Center 3600. These Art Units are all assigned to examine applications that relate in one way or another to the general topic of Electronic Commerce.

 

Ecommerce Art Units at the USPTO.

E-commerce Art Units at the USPTO.

 

You will notice that there are two Art Units, Art Unit 3689 and 3622, each having an overall allowance rate of under 10%. Meanwhile, the Art Unit with the highest allowance rate on the list allows 64.6% of patent applications.

This is not a blip on the radar screen for either 3689 or 3622. I’ve written about these Art Units (and others) for at least the last 5 years. Each time I’ve reviewed the allowance rates from 3689 and 3622 the allowance rate has been under 10%. Still, by all outward appearance it seems the Patent Office does nothing.

That these two Art Units, year after year, have the lowest allowance rates in TC 3600, and the lowest allowance rates throughout the entire Patent Office, is particularly alarming for a number of reasons. First, Art Unit 3689 handles applications that relate to business processing, cost/price and reservations. Now look at Art Unit 3628, which has a comparable description for the technologies it examines, but has an allowance rate that is 35.7%. Thus, Art Unit 3628 has an allowance rate that is more than 5 times that of Art Unit 3689 despite the fact that they handle similar patent applications.

Similarly, if you look at Art Unit 3622, which handles applications dealing with incentive programs and coupons, and compare it with Art Unit 3688 and Art Unit 3682, both of which also handle patent applications relating to incentive programs and coupons, you see the same alarming trend. These three Art Units that handle the same type of patent application yet have allowance rates of 9.5%, 29.2% and 63.2%. Something seems seriously wrong and is screaming for investigation.

These widely divergent allowance rates are difficult to understand when you realize that Art Units 3689 and 3622 are dominated by major corporations. For example, according to LexisNexis Patent Advisor®, the most frequent owners/assignees in Art Unit 3622 are Google, Microsoft, Yahoo, Bank of America, IBM, Facebook, PayPal, Mastercard, eBay and Fujitsu. Similarly, the most frequent owners/assignees in Art Unit 3689 are IBM, SAP, Microsoft, Bank of America, Hewlett Packard, Fujitsu, Hitachi, Oracle and General Motors. We are not talking about small entities or independent inventors who are representing themselves. We are talking about multi-national corporations that hire the best patent attorneys at the best firms and the allowance rates are under 10% while similar Art Units are 5 or 6 times that?

Look, I don’t mean to rain on anyone’s parade. I’m all in favor of streamlining the patent prosecution process. Giving applicants more opportunity to explain why they are entitled to claims in a way that doesn’t require years waiting for either an RCE or appeal is wonderful. But let’s not lose sight of the fact that this additional procedural tool will do absolutely nothing to persuade recalcitrant patent examiners that simply collect a pay check and have little or no intention of ever allowing patent claims.

Not that my advice is being solicited, but I think it is well past time for the Patent Office to close down Art Units 3689 and 3622. Patent examiners in those Art Units should be reassigned to Art Units throughout the Office (preferably exemplary Art Units with higher allowance rates) so they can learn how the Office is supposed to operate.

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* I could not find a definition for Art Unit 3696. It is not listed on the Patent Office page for Technology Center 3600, but it does exist. Art Units 3691 through 3695 all related to Electronic Commerce: Finance & Banking, Accounting, which is why 3696 is characterized in that way.

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 81 Comments comments.

  1. mike July 12, 2016 10:24 am

    Proceeding from the same facts, I’m more hopeful about the effect of P3 than you appear to be. The biggest advantage seems to be that the final rejection will be reviewed by a panel of experienced examiners rather than just a single recalcitrant examiner, with input from both the applicant and the examiner – sort of an interview after final examination with less opportunity for a single examiner or supervisor to refuse to budge. After seeing some of the statistics for individual examiners for allowance rates with and without appeal or with and without interviews, I can’t see a quick multi-examiner review of a final rejection as anything but good.

    If the panel contains one or more examiners outside the art unit, it might even help adjust some of the disparities you point out.

  2. step back July 12, 2016 10:25 am

    Hi Gene, I think you are missing a “less” in front of one of your necessaries.

  3. step back July 12, 2016 10:31 am

    Speaking of elephants, there is one in the name of the program. Post? prosecution.

    Just because the examiner has stamped his/her action “final” does not mean that prosecution is over.

    Somebody at the USPTO needs to bone up on their understanding of law.

    (Maybe one of those “recalcitrant” examiners or SPEs thereof?)
    ((Or Director thereofs?))

  4. Curious July 12, 2016 10:47 am

    Gene:

    Since you have access to the technology whereas I do not, let me suggest a search for your to perform. Specifically, identify how many patents have been issued by art unit 3689 in the past 12 months.

    I had to do it the hard way by searching the USPTO’s search engine using classes associated with the art unit — very inefficient. The result I obtained, which I would be very grateful if you could confirm, is that the last patent issued by 3689 was sometime in May of 2015.

    I’ve browsed other art units (the process takes too long for me to do them all), and I’ve seen similar results. I know of some 3600 (business method) art units that are still issuing patents, but it has been drastically reduced.

    Regardless, I think your numbers paint too rosy of a picture as I believe your allowance numbers also reflect pre-Alice numbers.

  5. Night Writer July 12, 2016 12:39 pm

    @4 Curious: it is ugly. I would like to know that too as I prosecute applications in that unit and the examiners say they haven’t issued a patent in two years.

  6. American Cowboy July 12, 2016 1:53 pm

    Gene, I usually agree with you unqualifiedly. But, I have to question the criticism of Art Units 3689 and 3622. When you look at the subject matter of the patent applications sent to them for examination (Business processing, cost/price reservations & Incentive Programs/Coupons) you have to wonder how they allow anything in light of Scotus’s Bilski and Alice scorching of the earth of those technologies.

  7. Curious July 12, 2016 2:26 pm

    you have to wonder how they allow anything in light of Scotus’s Bilski and Alice scorching of the earth of those technologies
    I again invite people to read both Bilski and Alice. The SCOTUS was not advocating a scorched earth policy regarding “Business processing, cost/price reservations & Incentive Programs/Coupons”). In Bilski, they found that the claims were directed to a fundamental economic processes. In Alice, they stated that the claims were very similar to Bilski and relied upon the same rationale. I doubt that many of the applications in 3689 are “directed to” fundamental economic processes.

    While SCOTUS opened up the door a little bit when it comes to 101 rejections of computer-implemented inventions, it has been the lower courts and the USPTO that have flung it wide open.

  8. step back July 12, 2016 2:47 pm

    American @6

    I think the problems with some 3600 art units is an intractable one because some clients have to maintain long term good relations with the examiners of these units no matter what and thus counsel is restricted to polite platitudes no matter how egregiously the PTO steps beyond the bounds of lawful action (i.e. engaging in arbitrary and capricious decision making) .

  9. Gene Quinn July 12, 2016 3:13 pm

    AC-

    Let’s not forget that one of the few bright line rules that we have after the quartet of patent eligibility cases from the Supreme Court is that business methods are patent eligible. I know that many examiners in the Patent Office are of the belief that business methods are not patent eligible, but that is because they are ignoring the Supreme Court and doing so without any negative consequence or blowback.

    -Gene

  10. Gene Quinn July 12, 2016 3:14 pm

    Step-

    I’m not going to disagree with you that attorneys and applicants want to preserve working relationships with examiners and Art Units, but at some point in time, when the allowance rates are under 10%, there is NO relationship… unless you call a hammer to a nail a “relationship.”

    -Gene

  11. Gene Quinn July 12, 2016 3:17 pm

    Curious-

    I’ll have to do some more digging. Years ago when I looked at these Art Units what I found was the only time they issued patents was when they were ordered to do so by the Board. So it is not at all surprising that there are patent examiners, perhaps numerous patent examiners, that haven’t issued patents for many years in these Art Units.

    Truthfully, if you are assigned to one of these two Art Units you either need to figure out a strategy to get out with a continuation or to get to appeal as soon as possible. Getting a patent from examiners in 3689 and 3622 is not a realistic goal.

    -Gene

  12. Curious July 12, 2016 4:13 pm

    Years ago when I looked at these Art Units what I found was the only time they issued patents was when they were ordered to do so by the Board.
    Actually, what has happened recently, is that in 3689 (from what I’ve been able to discern from my research) is that Board has reversed rejections (including 101 rejections). However, in reversing the 101 rejections, the Board states that the Examiner employed the wrong test (i.e., machine or transformation), which has given the Examiner an out to apply Alice. Consequently, the Examiner reopens within a 101 rejection based upon Alice. This is consistent with my experience as well.

  13. Anon July 12, 2016 4:15 pm

    Curious @7,

    I will disagree with you as to where exactly to lay the blame for the actions of the lower courts.

    As written, the Supreme Court “t001” of the “Gist/Abstract” sword simply came with NO limitations.

    While Gene is technically correct in that the Court did not “outlaw” business methods (and in truth, could not, as that would have required an explicit re-writing of the words of Congress); the Court very much “green-lighted” a completely arbitrary and “whatever” approach to Gisting (or “directed to”) and then applying the undefined Abstracting.

    Those who do not want to hold the Supreme Court accountable – in my view – are very much part of the problem!

    As I mentioned when Alice was released, we may want to stomp on the gas pedal and crash this thing sooner rather than later in order to draw attention to what exactly the Supreme Court has done. “Playing nice” is not a viable answer. Instead, let the country see the consequences, and then, maybe then, our Congress will wake up and see that their role has been purloined by the judicial branch and maybe then we will have a more forceful redo of what led to the Act of 1952.

  14. Night Writer July 12, 2016 5:56 pm

    The question whether these rejections are an application of the law or are they PTO policy to not allow any claims in these art units.

  15. Edward Heller July 12, 2016 6:15 pm

    Gene, I think a fair reading of Bilski is that there is no accepted definition of business methods, and primarily, for that reason, they could not be categorically excluded from eligibility. Still, the claims in Bilski itself, which were directed to a method of balancing risk, which everyone in that case accepted to be a business method, were found to be “abstract.” But, as we all know, the reasoning of the majority as to why the claims were abstract was less than scrutable, if there was any reasoning at all.

    I think the claims in Versata were eligible because they were related to an improved data processing method, as opposed to an improvement in a business method, even though the output of the claimed method was price. Therefor, I believe that Versata was wrongly decided by the Federal Circuit. This was issue 3 presented in Versata’s petition to the Supreme Court:

    “(3) whether a software-related invention that improves the performance of computer operations is patent-eligible subject matter;”

    However, on June 27, its petition to the Supremes was denied.

    Ugh.

    Still, the law in the area of business methods/software remains in flux and uncertainty. I am not surprised that the PTO might be taking a hard line, forcing applicants to appeal just to clarify the law.

  16. step back July 12, 2016 6:34 pm

    Anon @13,

    Not only did the Supremes bring back the outlawed “gisting” through their new “directed to” contrivance, but they also encouraged lower courts and the PTO to violate that part of 35 USC 112 which says it is the inventor and not the judge/examiner who determines what the invention is is.

  17. Gene Quinn July 12, 2016 7:19 pm

    Curious-

    I’m 99.9% sure that the allowance rates would not include any applications still pending, so they would certainly not capture the ridiculous games that examiners in those Art Units are playing. For the life of me I con’t understand why the Patent Office doesn’t do something about those examiners. You simply cannot have examiners that arrogantly tell applicants and attorneys that there is nothing they can ever do that they just don’t issue patents period, but that is what happens.

    -Gene

  18. Gene Quinn July 12, 2016 7:25 pm

    Edward-

    You say: “Gene, I think a fair reading of Bilski is that there is no accepted definition of business methods, and primarily, for that reason, they could not be categorically excluded from eligibility.”

    That isn’t correct. If you read Bilski you will see that the Supreme Court went to great lengths to explain that the Patent Act uses the term “business method patents” in a variety of different places. In fact, one of the primary reasons for saying business methods remain patent eligible is because Congress explicitly mentions them in the statute so they must have known that they existed and intended for them to be patent eligible. Furthermore, CBM is intended to strip certain business method patents. Had all business method patents been ineligible there would be no need for the cumbersome administrative trial proceeding of CBM.

    The Patent Act also makes reference to software patents and the patenting of computer programs, so we know that software is patent eligible despite what some examiners believe to the contrary.

    As far as a hard line, it is difficult to reconcile the allowance rates of similarly situated Art Units. The treatment you get at the Patent Office is Art Unit dependent and examiner dependent, which is the luck of the draw. That is obviously on its face an equal protection violation in application.

    -Gene

  19. Stu Soffer July 12, 2016 7:28 pm

    Some time ago I did a study of the patent litigation rate of examiners. It was interesting, but faulty since it didn’t differentiate the length of examiner experience. It wasn’t fair, so I trashed it. I never showed it to anyone (well, maybe Mark). But it still leaves a valid question: are there some examiners whose reviews and allowances are subsequently litigated or challenged, exceed are out-of-band for the norm?

  20. Anon July 12, 2016 7:57 pm

    Gene,

    I was going to pen a response to Mr. Heller, noting his “soft stance” here (he really is on a crusade against business method patents per se), and one of** the items that I know that he knows is the very point you mention about Congress already explicitly allowing business method patents as a category (as opposed to his “spin” of “categorically”).

    This has been an active conversation with Mr. Heller for a number of years now. What he advocates with religious fervor and reckless abandon is barely presented in his single post here.

    ** I have seen a list as long as five distinct points put to Mr. Heller, for which he has never directly and with any sense of inte11ectual honesty attempted to answer a single point.

    For example, he attempts to use a logical fallacy here that since Bilski was not allowed, and everyone knows Bilski was a business method patent, that somehow must mean that ALL business method patents are not eligible (I will note that it took literally almost a full year to have Mr. Heller understand that the holding of Bilski was NOT “business methods” but was rather “abstract” – and THAT has no effect whatsoever on his attempts to mischaracterize things so as to pursue his Jihad against business method patents. This deceptive ploy of Mr. Heller to attempt to insert the many for the one (treating business methods categorically) was long ago revealed when medical method patents were thrown out by the Supreme Court. Asked if the same parallel logic applied, and that ALL medical method patents were to be deemed not eligible, Mr. Heller took the path he so often takes when confronted with his deceptions: he pretended not to understand, he took umbrage, and basically, he just ran away.

    As I mention, this is just not a new thing with Mr. Heller. And rest assured, tomorrow (if not today), he will again post as if what you (or anyone else) have ever informed him of simply was never mentioned.

  21. Edward Heller July 12, 2016 8:34 pm

    Gene, If you are right that business methods are not categorically excluded for reasons other than that there is no good definition, then you might be right that the only business methods excluded are of the type in Bilski, those that claim fundamental business practices.

    But clearly, the Federal Circuit does not believe only fundamental business practices are excluded. The proof is in Versata where the claimed invention was directed to an improved data processing method. The fact that the Supreme Court did not take certiorari should be viewed as an endorsement of the Federal Circuit’s view.

    As of now, I think the Federal Circuit is not finding eligible any claim that includes price, or risk or the like even if the invention is directed to improved data processing. So the problem we have to at least get those kinds of inventions (the Versata kind) to be considered eligible is to get the Supreme Court to take the right case and reverse.

    The bottom line, the debate about the scope of Bilski is somewhat academic unless the Federal Circuit effectively reverses Versata.

  22. Night Writer July 12, 2016 9:11 pm

    You know, I actually prosecute and write some business method cases (I also do lots of other types of cases). But what disturbs me is that so many examiners try not to apply the law. Look–find art and reject on the art. I have a case where the examiner rejected it under 101 and told me if he wanted to he could find art. I challenged him to find the art. He couldn’t find the art despite him telling me that he worked in this area for 15 years and saying he knew all the art out there. He also told me there was no way that the “committee” would allow him to allow the case. So, we are appealing the 101 with a bogus 103 rejection.

    It is just not law. I also prosecute mechanical, bio-tech, electrical, and software. I don’t see much difference in any of the cases. All of them are about the same when it come down to it. Some invention with a bunch of elements and a bunch of possibilities for each element.

    Anyway, it is not the law that is keeping us from allowances, but the “committee.”

  23. Anon July 12, 2016 9:42 pm

    Mr. Heller @ 20,

    Your bias towards a common law approach is showing.

    Patent law is statutory, not common law.

    Sadly, as I have remarked on other threads, it is you that may have the possibility of arguing a separation of powers case before the Court. If you cannot even grasp what separation of powers means when it comes to statutory versus common law, how is anyone going to expect you to be able to argue separation of powers when it comes between the executive and the judiciary?

  24. Curious July 12, 2016 9:45 pm

    You simply cannot have examiners that arrogantly tell applicants and attorneys that there is nothing they can ever do that they just don’t issue patents period, but that is what happens.
    This isn’t a bottom-up problem. These examiners aren’t just going rogue and doing this on their own. This MUST be coming from above. Additionally, this is not just a recent occurrence. This blatant disregard of the law has been going on in TC3600 (business methods) for over a decade.

    I have long counseled clients that the WORSE examination, BY FAR, comes out of 3600 (business methods). It is difficult to tell whether they just don’t understand the law or that they are just blatantly misrepresenting the law. My guess (from dealing with freshly-minted examiner who consistently understand the law much better) is that they are blatantly misrepresenting the law — or that the person(s) training these examiners is/are (knowingly) training them incorrectly.

    This is post is from February of 2012: http://www.ipwatchdog.com/2012/02/26/is-there-a-systematic-denial-of-due-process-at-the-uspto/id=22403/

    In it you wrote:
    Then we have Art Unit 3689, with an allowance rate of 4.5% and 64% of the patents they issue only being issued after the filing of an appeal brief. Combine this with a 76.5% reversal rate and there seems to be a real problem here. How can one business method Art Unit have a 70.2% allowance rate and another have a 4.5% allowance rate? Something is seriously wrong.

    This was 4 f’ing years ago and was based upon data that is 5 years old. It is hard to imagine that it could be worse after 4 years, but it is worse. You suggested closing down 3689 and reassigning the examiners elsewhere. My alternative suggestion is to close down 3689 and fire every examiner in 3689 as well as every supervisor (all the way up the chain of command) that supervises 3689. This is beyond ridiculous.

  25. Curious July 12, 2016 9:58 pm

    But clearly, the Federal Circuit does not believe only fundamental business practices are excluded. The proof is in Versata where the claimed invention was directed to an improved data processing method. The fact that the Supreme Court did not take certiorari should be viewed as an endorsement of the Federal Circuit’s view.
    The Federal Circuit is chock full of an anti-patent crowd. SCOTUS invited the Federal Circuit to fill in the gaps as to what trees need to be felled in the forest of patentable subject matter. However, many at the Federal Circuit took this as an invitation to take out the flamethrowers and napalm to burn down the whole forest.

    As for SCOTUS, I wouldn’t take lack of cert as an endorsement of the Federal Circuit’s position. There are only so many cases SCOTUS is going to take.

    Had all business method patents been ineligible there would be no need for the cumbersome administrative trial proceeding of CBM.
    Gene raises an excellent point. If Congress had wanted all CBMs to be invalidated, there would be no need for a trial after a CBM (covered business method) proceeding has been instituted. Congress could have easily said, “if it is a CBM, then it is not statutory subject matter.” They did not. Therefore, there must be some subset of CBMs that Congress deems patentable.

  26. step back July 13, 2016 12:00 am

    Just like the rest of the general public, we quickly forget the last act of terrorism committed by the PTO against inventors.

    What was that incident again? Where the PTO was rushing through some unconstitutional set of new rules and some Greek guy (named started with T?) sued them and shut down their whole ultra vires, anti-inventor project?

    This is war. We are myopic if we don’t see it as that and instead think these are isolated incidents.

    For some partial rather than “Total Recall”, see this:
    http://www.jsslaw.com/newsletter_details.aspx?id=16

  27. step back July 13, 2016 12:08 am

    Oh yeah, now I found it, Tafas v. Dudas (the 5/25 rules):
    https://www.scribd.com/document/2738194/Tafas-v-Dudas-et-al-Document-No-246

  28. Edward Heller July 13, 2016 5:59 am

    Curious, the way forward though, given EnFish in contrast with Versata, is to emphasize the improved data processing aspects. If EnFish had been decided before Versata, I believe there would have been a good possibility that the result in Versata would have been different.

    But that is just me thinking such. It all could also be that the Federal Circuit will simply hold it any claim that includes things like “price” is a claim directed to ineligible subject matter regardless that it also recites improved data processing methods.

  29. Ely Erlich July 13, 2016 7:50 am

    Gene,

    Thanks for the interesting article.

    In a different article (I think it was a linkedin post unrelated to you) an examiner commented that until an examiner authorized with signatory rights he is completely subordinate to his unit (manager?). Accordingly, this examiner said his rejection/approval approach simple changed from unit to unit.

    Perhaps instead of a few bad apples, it is just an even smaller number of misguided bosses…

    Cheers

  30. Marjorie Scariati July 13, 2016 9:12 am

    “We are not talking about small entities or independent inventors who are representing themselves. We are talking about multi-national corporations that hire the best patent attorneys at the best firms and the allowance rates are under 10% while similar Art Units are 5 or 6 times that”. Another factor may be that these multi-national corporations have unlimited funding compared to independent inventors and small entities, and they are therefore able to apply for patent applications that they know have a slim chance of being allowed, perhaps with the hope that by the time the applications are examined the prevailing law or Examiner interpretation may have changed, and as a business strategy to block competitors, etc. If even a small percentage of their applications fell into these technology areas, it may represent a large percentage of the total applications in these art units, leading to such low allowance rates. I’d be curious to know who the applicants are in the related art units with better allowance rates – is there a higher percentage of small and micro entities by comparison?

  31. Gene Quinn July 13, 2016 9:17 am

    Ely-

    I believe you are 100% correct. I’ve been told to ask about Quality Assurance and get the names of those assigned to various Art Units. I’ve been told it will be extremely eye-opening. I’ve asked repeatedly for this information, which should be public record, and the Patent Office never provides it. I have been told there are as few as several Quality Assurance Supervisors that hate patents and then everyone in the Art Units they review are giving them what they demand. With the USPTO refusing to provide the information that would confirm or deny what I’ve been told the silence seems telling.

    -Gene

  32. Night Writer July 13, 2016 9:53 am

    @31 Gene: Yes find out about these committees. It is not the examiners.

    @28 Edward: Your ideas are right out of 1920. Please tell us about the ROM again and quote Ginsburg and Benson some.

  33. John Darling July 13, 2016 11:12 am

    “I’m 99.9% sure that the allowance rates would not include any applications still pending, so they would certainly not capture the ridiculous games that examiners in those Art Units are playing. For the life of me I con’t understand why the Patent Office doesn’t do something about those examiners. You simply cannot have examiners that arrogantly tell applicants and attorneys that there is nothing they can ever do that they just don’t issue patents period, but that is what happens.”

    Gene, Ely is correct. The PTO doesn’t “do something about those examiners” because “those examiners” are doing exactly what they are told to do. By the PTO. By the unaccountable squadrons of know-nothing, do-nothing GS-15 QAS’s, and “subject matter experts” and “business process specialists” and “appeal specialists” that the PTO has put in place in those TC’s to do exactly what the PTO wants done: frustrate the applicants of those cases into abandonment. Anybody who denies that that is exactly what is going on is either not paying attention, or lying. Simple as that.

  34. ItCouldBeWorse July 13, 2016 11:13 am

    I agree with Marjorie Scariati: “I’d be curious to know who the applicants are in the related art units with better allowance rates – is there a higher percentage of small and micro entities by comparison?”

    IT makes complete sense that the wealthiest companies would have by far the most applications, whether worthy or not.

    Perhaps there’s even an unwritten understanding at the USPTO that the applications of Google, Microsoft, Yahoo, Bank of America, IBM, Facebook, PayPal, Mastercard, eBay, Fujitsu, IBM, SAP, Bank of America, Hewlett Packard, Hitachi, Oracle and General Motors should be extra carefully scrutinized to prevent theses companies from gaining control of everything in their path.

  35. Night Writer July 13, 2016 12:59 pm

    @34: or it could be worse in that the big companies could be getting better treatment.Or the big companies can afford the best representation.

  36. Gene Quinn July 13, 2016 1:28 pm

    All-

    It is worse, much worse. Working on finalizing another article that takes the next steps to show just how bad the problem is. The plan is to publish the article tomorrow morning. Stay tuned!

    -Gene

  37. Rick July 13, 2016 1:50 pm

    What’s the implication, then? That there are some art units made up of only examiners that at best happen to have anti-allowance bents or at worst have somehow conspired against applicants to allow as little as possible? From the general tone of the article, it seems like the implied explanation has to be one of these.

  38. ExamLwFrmCorp July 13, 2016 2:06 pm

    @31: – This is public information – http://www.uspto.gov/patent/contact-patents/patent-technology-centers-management#3600. Interestingly it looks like the quality assurance organizations are structured differently in the different tech centers. 3600 apparently uses Training Quality Assurance Specialists (TQAS) whereas 2600 has Quality Assurance Specialists (QAS) and some tech centers don’t appear to have any quality assurance organization.

  39. Curious July 13, 2016 2:07 pm

    It is worse, much worse.
    LOL … if I wasn’t laughing, I would be crying.

    The plan is to publish the article tomorrow morning.
    Make it a good one. We need to find a way to get the article before influential members of Congress (e.g., those that head up the committees that involve intellectual property and/or oversee the USPTO).

    BTW — I’ve been meaning to mention this to you, and this is as good a time as any, but you need to find a way to keep your more popular (e.g., most heavily commented on and/or read) articles on the front page of your website longer. Oftentimes, because of the substantial number of articles that get published on your site on any given day, the article I’m looking for is buried after just a day or two after being published. While I’ll eventually be able to find it, that is because I’m familiar with the structure of your website. Others (with less experience with your website), however, lose out on reading the more important articles. Just a suggestion …

  40. Curious July 13, 2016 2:34 pm

    Not knowing what direction you’ll be taking your article, I thought the following is interesting.

    The USPTO’s numbers, by month for the last 2 years, for the number of patent examiners can be found here http://www.uspto.gov/corda/dashboards/patents/kpis/kpiExaminers.kpixml.

    While the numbers fluctuate somewhat, last months number of 8185 (or 8200 to round it off) is a good number to work with.

    The following lists patents issued by year at the USPTO. http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm

    For FY2015, that number was 589,410 (just counting utility applications).

    A little bit of math yields that each patent examiner, on average, issues about 72 utility patents a year. That number is likely higher as the number of examiners used in our calculation (8200) includes supervisory examiners as well as examiners that handle design and plant patents.

  41. Anon July 13, 2016 2:35 pm

    Along the lines of what Curious suggests, I would not mind a subset window off to the side of (perhaps voter indicated) “important” or “widely discussed” threads. Would only need the title of the thread (as a hyperlink) and an indicator of why it was on the preferred list.

    Perhaps in the current real estate of “other contributors” (although I do recognize the nice shout out to others contributing to this site, the feature does seem to take up a lot of room).

  42. Curious July 13, 2016 2:41 pm

    I messed up my numbers. Looked in the wrong column. The number (589,410) was for applications filed. Issued patents are 298,407. This leaves examiner production at about 36 patents/year.

  43. step back July 13, 2016 2:44 pm

    Anon @38: There are different versions of the IPWatchdog website. Depends which hyperlink you use. Some articles that appear in the /blog website disappear off the main watchdog page for reasons not entirely clear.

  44. step back July 13, 2016 2:48 pm

    As for making Congress (or anyone else in power) pay attention to what the PTO is doing that is a joke.

    Congress couldn’t care less.
    The President (and Presidential candidates) couldn’t care less.
    It’s not a voting issue.
    The general public is clueless.
    They go to the Big Box store and the magic (new inventions) just appear all on their own.

    (Even SCOTUS understands that “innovation” is the natural phenomenon outcome of “market forces.” Re-read KSR v. Teleflex.)

  45. LLDC July 13, 2016 2:55 pm

    #1 – Train the Examiners.
    #2 – Fire Examiners who show up to interviews not prepared or who bail on interviews. Dealing with recalcitrant examiners costs time and money.
    #3 – Abolish this ridiculous Post-Prosecution Program. They should do their job right the first time.
    #4 – Get rid of the Union/POPA that protects these Examiners.
    Enough!

  46. Mike E July 13, 2016 3:00 pm

    How about a mechanism that allows for reassignment to a new examiner that allows them to give a fresh look at the application, independent of the first examiner?

  47. Curious July 13, 2016 4:12 pm

    As for making Congress (or anyone else in power) pay attention to what the PTO is doing that is a joke.
    If no one cares (or will care), we are all wasting our time here. I add my voice to the chorus of voices that this forum provides because I believe that there is someone(s) in power who is/are naturally inclined towards inventions and inventors and is/are looking for a cause to take up. I add my voice in the hope that the inane and/or counterproductive actions of the USPTO and the Courts will be revealed for what they are and we will be part of that revealing.

    I have too much to do to b’tch and moan about something that I cannot impact.

    BTW … (some) innovation is a natural result of market forces. However, one gets much more innovation when that innovation is also incentivized via a strong patent system. This is a point that many of the anti-patent crowd don’t appreciate.

  48. Night Writer July 13, 2016 6:07 pm

    @42 the way forward is to show that innovation is being hurt by the weakening of the patent system. There are some studies that are saying that –real ones from economist not the unethical type from a Lemley type.

  49. step back July 13, 2016 6:37 pm

    Global innovation isn’t being hurt by the destruction of the US patent system.

    There are numerous “frenemies” out there (perhaps same as them who fund “friends” of the Court?) who would be all too happy to see America self-destruct in this way.

    It will be decades before someone in power wakes up and startles with a “Hey what happened? Why aren’t we great again?”

    By then it will be too late. The rest of the world (ROTW) will have passed us by.

    Neil Sidaka was wrong. Breaking up isn’t hard to do.

    http://patentu.blogspot.com/2016/06/broxit-great-unraveling.html

  50. step back July 13, 2016 6:41 pm

    For you yunggin’s out there who never heard of Neil Sedeka:
    http://www.metrolyrics.com/breaking-up-is-hard-to-do-lyrics-neil-sedaka.html

  51. Gene Quinn July 13, 2016 8:39 pm

    ExamLawFrmCorp-

    I think the information on the USPTO page is outdated. Some of the information about Tech Center 3600 doesn’t even mention all of the Art Units that are known to exist. It is also my understanding that QAS are specifically assigned to certain Art Units, so knowing that there are several QAS assigned to TC 3600 doesn’t necessarily help. Some Art Units in TC 3600 have very high allowance rates. Others have extremely low allowance rates. The USPTO has not been willing to tell me who is assigned to which Art Units.

    -Gene

  52. Harsh July 13, 2016 11:12 pm

    Gene:

    Here is an old link to the USPTO website that lists AU 3696.

    http://www.uspto.gov/web/menu/pbmethod//contact.htm

    Hope this is useful.

    Harsh.

  53. KenF July 14, 2016 6:49 pm

    Examiners’ union is a major source of “challenge.” When AFCP 2.0 came out, I was hopeful. Yet ultimately the decision whether to give applicant a little more time is up to the “professional discretion” of the examiner in charge, and that, as I understand it, was per the union’s demand. Therefore, if examiner is just a d***head count monkey, afcp is pointless as examiner will have no incentive to give more time and won’t have to answer to anyone.

    Similarly, I have yet to have pre-appeal brief review do anything (other than let me get some of the text for my appeal brief down in writing). Even in the most flagrantly b.s.’ish situation — in a case where I filed the AB just today b/c pre-brief conference was useless, examiner asserts that a reference in which a gaming machine is spitting out a fraudulent ID card and not letting the game be played is actually being played just by virtue of the card being inserted into the machine — the review conference gave me the same old “tell it to the judge” denial.

    PERHAPS this new procedure will let us get in front of someone we can talk sense to and help us stop the cycle of nonsense……. we can only wait and see.

  54. Davis July 14, 2016 7:18 pm

    Oh, I’m SOOOOO sorry, Gene, that the applicant’s and attnys actually have to earn a patent instead of just being handed one. What, next you’re going to advocate for elimination of Calc 3 because it’s “too difficult”?

    People like you are why the system is the way it is – always looking for ways to game the system to avoid actually doing your job.

  55. Gene Quinn July 14, 2016 8:45 pm

    Davis-

    I appreciate reading ridiculous comments from ignorant readers like you.

    Thanks for reading.

    -Gene

  56. Davis July 14, 2016 11:36 pm

    Hey man, no problem. I’m not sure it rises to your practiced level of advocating getting rid of things that you find too difficult, but I’m sure you’ve got plenty of teaching materials on your site.

    At least Crouch has the intellectual integrity to understand that “make the patent system better” doesn’t mean “stop making people earn their patent”

  57. Gene Quinn July 14, 2016 11:46 pm

    Davis-

    Again, appreciate your ignorant comment. Thanks for returning to IPWatchdog.com.

    Of course, if you really understood patent law you’d understand that the applicant is entitled to a patent unless… So applicants don’t have to earn patents. Examiners are required to come up with legitimate reasons to reject. I’m sorry if you are offended when I write to expose the nonsense examiners put applicants through.

    But, as you say, at least PatentlyO is an outlet for people like you.

    Cheers.

  58. KenF July 15, 2016 9:53 am

    @Davis,

    I have no idea who you are or what you do, but I can assure you from far too much first-hand experience where the system-gaming and job-avoidance is going on, and it isn’t this side of the fence…..

  59. Justanexaminer July 15, 2016 10:27 am

    “Of course, if you really understood patent law you’d understand that the applicant is entitled to a patent unless”

    “A defendant is presumed innocent unless….”

    So defense attorneys don’t have to earn an acquittal? They can just sit back and be like “eh, I’m not going to make a legitimate argument against the prosecution because of ‘unless'”? The DA doesn’t have to make the defense attorney work hard? The logical hoops you have to jump through here are just laughable.

    “Examiners are required to come up with legitimate reasons to reject. ”

    Your point is what? That YOU are the determiner of what is “legitimate” and what is not? This isn’t subjective, but your overall thesis is that an AU with such a low allowance rate is illegitimate IS subjective? That’s a classic example of correlation/causation fallacy. What’s an “acceptable” allowance rate according to Quinn? Is it “all my patents?” Come on, surely you can see the absurdity in your position.

    “But, as you say, at least PatentlyO is an outlet”

    Remind me who was invited to the quality summit and who wasn’t……I think that says enough

  60. Fighting back July 15, 2016 10:33 am

    Gene,

    First these after final programs might work in some areas of the office, after all in the mechanical arts, giving them 3 hours more is a bonus to do the work when they might have had 9 hours total per case. Our area is much different! My only to you is to request that the patent practitioner’s and the management of the USPTO will stop focusing on how to prolong prosecution by piece meal examination after prosecution has closed and commit resources to pilots where further amendment and consideration is done before the final action is entered. Everyone knows that the statistics show first action interviews and accelerated exams cost less to prosecute and lead to quicker allowance rates. Why not figure out how to make those programs better, instead of these nonsensical programs, that focus on examination after every final in an application. Why bother with this approach when the other programs have the allowance rates you seek (see USPTO stats), since it is also shown in these programs that after final issues are non existent. If more than 50% are allowed before the final, then AF submissions would go way down and there would be no need to create time wasting pilots that don’t lead to the result desired! Back to the request…why would an examiner entertain, in high time per production unit areas, an amendment which changes the scope of the claim in a setting that grants them in many cases a simple fraction of the time granted to perform a full search on said material. MPEP 1308 requires an examiner, yes requires, to do a full seach of PGPUB based on the new claim on top of any other database where the scope may be applicable, if any claim is determined to be close to allowance. Do the decision makers really think that one hour of search time or even three hours leads to better quality patents and that they can be perform said search on the entire database, along with typing the notice of allowance and required forms, in said allotted time. In contrast, I don’t believe these programs have a high allowance rate at all. Simple because of the need to create new changes to them. I also believe if these programs (Afcp 2.0 or P3) were to have a high allowance rate, that there would be a direct correlation in the future of an increased AIA submissions at the PTAB on these very cases. I can say this and simply put these programs don’t provide enough time or credit for doing the work and should be easily challenged under AIA because they don’t provide a reasonable enough time to do the work. In addition, I believe both the AFCP 2.0 and P3 programs will do the exact opposite of reducing RCE’s because in my area 99% of the cases, the submitted amendments propose new scope, never presented previously and merely overcome the art of record but are not allowable because the amendment leads applicant directly into a new rejection, in spite of being told otherwise in the final rejection. Thus, its not that I don’t want to allow, its that I’m not willing to allow a claim that simply overcomes a reference in the rejection, when I can replace it with another reference that teaches the feature. Moreover, Applicant will not amend over the said additional reference unless it is in a rejection, even if the reference is on an 892. Once again my wish is for Applicant and the Office to engage in setting up more time during prosecution or prior to that rather than focusing on after prosecution has closed to consider new material. Put it another way…. follow this scenario… the examiner issues a final rejection, the applicant determines that, amendment is the way to go, why is that? Is it that the examiner has a reasonable position? Don’t they have to consider that they are surrendering scope? If so, the applicant then proposes an amendment under 116, to narrow the claim and then now applicant wants said amendment entered under AFCP 2.0 to have that item considered only after its proven that their broad claim is unpatentable and they want that consideration in an environment with a drastically reduced time window. Perhaps they could work harder sooner in the prosecution cycle by calling examiners, interviewing with knowledge of their specs, proposing more limitations that don’t simply move the ball 5 yards down the field. If the examiners position isn’t reasonable, then why amend, why not just appeal? Why surrender scope, why create the issue in the first place. After all, if they believe the claim is patentable and the examiner is wrong, then why not exhaust their remedies rather than amend. A better question is, why as 1.116 says wasn’t this item proposed earlier? I propose this, why not try to work with the examiner instead of going around them? For the record, I’m not in any of the art units you mentioned previously and I grant most interview requests after final, as MPEP 713 states that we should do. Also, MPEP 714.12 explicitly states after final amendment are not a matter of right and Applicant must show… .”good and sufficient reasons why the proposed amendment was not proposed earlier”. Most, if any, submit such a response. Perhaps this is the reason for the recalcitrant examiners not considering Applicant’s proposals in the art units you criticize…

    Fighting back …

  61. KenF July 15, 2016 10:35 am

    @Justanexaminer,

    So are you indicating that you see yourself as the prosecutor, affirmatively trying to deny the applicant his patent and against whom the attorney/agent affirmatively has to act? Sure seems that many examiners I’ve had to deal with have that attitude, that’s for sure…..

  62. Gene Quinn July 15, 2016 10:41 am

    Justanexaminer:

    You ask: “So defense attorneys don’t have to earn an acquittal?”

    Correct. If you understood the law you would understand that fundamental concept.

    You ask: “They can just sit back and be like “eh, I’m not going to make a legitimate argument against the prosecution…”

    Correct again. In fact, that actually happens in criminal cases where the defendant simply rests after there prosecution has presented the case when it is believed the prosecution has not met the burden.

    You say: ” The logical hoops you have to jump through here are just laughable.”

    No. Your arrogance is what is laughable. You don’t understand the law and you are so confident in your ignorance that you are willing to publicly make statements that suggest that a criminal defendant has a burden of proof.

    Why don’t you tell us your name so we can know who we are speaking with and so we can truly appreciate just how much more knowledgeable about the law you are than I am?

    As for being invited to the quality summit, no… I wasn’t invited to speak at the quality summit because I’ve spoken directly with the Director, Deputy Director and Commissioner and told them point blank that I think the quality initiative is really much ado about nothing. Sure, I’m glad they are concerned about quality, but unless and until they are going to engage in an Office wide initiative that looks at the extremely low quality produced by examiners then a quality summit and quality initiative are really even less useful than rearranging chairs on the Titanic. So, you don’t generally get invited to speak when you are going to objectively tell the truth and that truth doesn’t coincide with the propaganda of the Office.

    And since you brought up quality, I’d love for the Office or examiners, or you to defend the practice of patent examiners sending office actions that include “[insert abstract idea]”. When examiners are so lazy that they just cut and paste the form rejection without even customizing the rejection and removing the canned language there is a huge quality problem. So a quality initiative that looks at patent applicants is wholly misplaced when there are Art Units that allow 1.3% of applications and examiners don’t do their jobs and produce garbage and TC Directors are overruling the Board.

    I don’t expect you to understand any of this. Heck, you don’t understand what it means that a defendant in a criminal proceeding is presumed innocent. But your level of misunderstanding is perfectly illustrative of the plight of applicants. Applicants deserve better.

    -Gene

  63. KenF July 15, 2016 10:58 am

    Big Amen to THAT, Gene!

  64. Justanexaminer July 16, 2016 10:10 am

    Gene Gene Gene, wow…you really don’t understand how this works do you? If your position were extrapolated out there’d be no need for court systems because the defendant would be like “innocent” and you’d be like “SEE! Not guilty”. The gavel falls.

    I also noticed that you conveniently left the part out about “making the defense attorney earn the acquittal”…which was my original point – that all you’re agitating for is for you to work less and put more of the burden on the PTO. Since you didn’t respond to that I can only assume you waived it and agree that’s what you’re doing.

    The name thing? Come on man, you can’t seriously think that’ll work. Once again, the issue isn’t who I am, it’s who you think YOU are.

    You’ve made it very clear that you view yourself as someone who thinks that a low allowance rate means a bad art unit instead of bad applications.

    You’ve made it very clear that your answer to actually having to do your job and earn a patent (ie. PROVE that the patent is valid over the prior art [notice I didn’t say that it’s valid because you trot out the “presumption of validity” garbage which is actually the core of the problem here]) is to get rid of the AUs that you can’t beat

    You’ve made it very clear that you consider allowance rate to be the most important statistic to use as opposed to other things like percent reopened (yes, they are different). If an AU had 0% reopens and 2% allowances, you’d call that AU terrible….I’d call that AU an excellent filter of terrible patents.

    You’ve made it very clear that you’re for a registration system (you might not have said it, but your history indicates it). This is why you bristle at the suggestion that you should break a sweat to get a patent.

    You’ve made it very clear that quality isn’t your concern, allowance rates are. I agree with the first part, the quality initiative is a canard, but here is where we’ll disagree – it’s being used to reduce the effectiveness of the PTO as “quality” is so amorphous that it can be used as a cudgel to bludgeon AUs into submission (like you’re trying to do here)

    You’ve made it very clear that you view any denial of a patent as a violation of an applicant’s rights (which is laughable).

    You’ve made it very clear that the way you want to get things accomplished at the office isn’t by doing YOUR job, it’s by complaining about Examiners doing theirs.

    And as for the challenging part, I’ll actually defend the “practice of patent examiners sending office actions that include [insert abstract idea]” – eg. the use of form rejections – by simply saying that 100% of the responses I get from attorneys are form responses. I have literally never seen an original thought from a IP lawyer – well, no, I take that back, I’ve seen one, and I was so shocked I stared at my monitor for three hours. Granted this is a “well you do it too” argument, but, in the end, your position is that the lawyers are not ever at fault, so if that premise is incorrect, so is your conclusion.

    So here’s an example to show where I’m coming from, just so you know. When I cite ¶0015 of ref for X and the lawyer amends to Y and ¶0016 of ref has Y VERBATIM, I begin to question exactly what the lawyer thinks his job is. That happens, I kid you not in ALL of my applications.

    So you tell me Gene, why wouldn’t I think that lawyers aren’t doing their jobs when they could have saved their client a final had they just READ the reference?

  65. Gene Quinn July 16, 2016 10:23 am

    Justanexaminer-

    The defense attorney does NOT need to earn an acquittal. The prosecutor needs to earn a conviction. Your ignorance is astonishing.

    The fact that you are comparing patent applicants with criminals is telling.

    I don’t see where you gave us your name and the Art Unit you are assigned to. Given what you are saying is utterly false and displays that you know absolutely nothing about the law, if you want to continue to comment on this forum I’m going to require you to provide your name. That way we can tell whether you are really an examiner or whether you are just trying to give patent examiners a bad name by saying things that are clearly erroneous in an intentional attempt make examiners look like they don’t know anything about what they are doing.

    -Gene

  66. KenF July 16, 2016 10:26 am

    @Justanexaminer,

    I, too, have seen my share of practitioners fail to read the reference and advocate intelligently with what the reference truly discloses in mind.

    That said, I have also seen my share of examiners give me ridiculous positions such as, well, the term “chemical polishing” is unclear because there are chemicals in the sweat on the palm of my hand and I can remove fibers from the surface of a sheet of paper when I run my hand across it, so I don’t know what chemical polishing means — what, you’re talking about processing metal? Oh, I don’t bother with the spec’n/context — so it’s indefinite and you need to clarify.

    There are hacks on both sides of the aisle, but I have encountered more on the PTO side than the bar side, and that’s a very honest statement

  67. JustanExaminer July 16, 2016 11:06 am

    Gene, you’re simply wrong. The problem with your position is that you’re confusing a presumption of validity of an application with de facto validity, there IS a difference. If we assumed that all applications are, de facto, valid, then they aren’t applications, they’re patents, and we have a registration system. Similarly, if we assumed all defendants are innocent then we don’t have a trial system.

    In both cases, though, we have massive apparatuses that are tasked with determining if that presumption is correct. That fact, alone, shows that you’re wrong. The moment that presumption is questioned is when, yes, the lawyer has to earn the result. S/he can’t simply point to the “presumption” as a defense and expect an acquittal.

    This is what you’re advocating. You seem to think that the presumption of validity alone means that anything that denies the application is, de jure, incorrect. That’s just wrong. Simply wrong.

    Heck, even to GET to that presumption means that your application has to be statutory – ie comport with section 101 which, and this is the key, states that one “may obtain a patent, subject to the conditions/requirements of this title”. Your “shall be entitled” (102) only kicks in after a 101 analysis…which is what you take issue with in your articles. Heck, even 103 says “A patent for a claimed invention may not be obtained” which seems to call into question this whole “IP lawyers don’t have to earn the patent” position you’re arguing from.

    Your myopic focus on 102 analysis while ignoring that the “shall” only kicks in after a 101 analysis is why your whole argument about sitting back and doing nothing simply makes no sense. Yes, the lawyer/applicant has to EARN a patent in the first place by FILING an application that is valid under the law. When those are rejected, those apps are invalid under the law and, again, the lawyer must EARN that validity.

    It’d be a lot easier here if you’d just come out and admit that you’re for a registration system.

    You want my name so you can do what with it? Agitate for action to be taken against me because you don’t agree with me? Yeah, sorry, my continuing your education isn’t really all that important when weighed against having to deal with what I can only assume would be your incessant agitation if you actually knew it – which, actually, hilariously proves my overall point – that you when you can’t get your way you demand that the obstacle be removed.

    KenF. Look, I agree. I can’t tell you how many times I’ve looked at OAs that go out and am like “if that’s the bare minimum, why am I busting my a$$??”. It’s demoralizing to see some of the trash that gets sent out. My macroscopic disagreement with Gene notwithstanding, I agree that the current system is set up to encourage a race to the bottom on both sides; but I don’t agree that a low allowance rate is indicative of that. I work in a TC that is not 3600 – ie, where the structure actually HAS to be there. I’ve never been appealed (all pre appeal conferences result in the app filing an RCE) and my allowance rate is extremely low. The proper conclusion to draw from this is that the applications are inadequate and not allowable. So, and this could go to the crux of the disagreement here, when I see lawyers arguing like what Gene is arguing about low allowances I’m like “What are you talking about? I have a low allowance rate and that structure HAS to be there and somehow *I’M* doing something wrong?”. It’s the applicant’s responsibility to claim a patentable invention, it’s the lawyer’s responsibility to submit a proper application (which is what I mean when I say “earn a patent), when I destroy both of those and Gene prances up to the mic and yells that I’m somehow causing problems because I’m not allowing more, the only conclusion I can draw is that Gene has no idea what “working” means.

  68. KenF July 16, 2016 11:14 am

    @Justanexaminer,
    I think you have a valid point that low allowance rate does not, per se, indicate problem. I agree with Gene, though, that if similar art units are handling similar applications and some are showing significantly higher allowance/rejection than others, something is up. The fact of the matter, based on lengthy conversations with an examiner with whom I worked when he was in private practice, is that there are, in fact, factions. Dealing with 101 vis a vis gaming machines was prime example. Depending on who the SPE was, you would either get your case allowed over 101 or not, even though the cases used the exact same language to de-abstractify the invention and even though SPE (handling app’n on one side) specifically indicated in statement of reasons for allowance that it was the magic language that was added that got things over the hump. Attitude in group art units flows down from the top, and if the “cream” has risen per the Peter Principle to a position where their poor attitude and care for what’s at stake can trickle down, I think it’s quite possible/likely that you will see the disparate allowance rates for similar cases as a function of where it lands.

    Does this mean we go for a registration system. I don’t think so. But I do think a large number of examiners are slackers who are gaming the system to get a paycheck on minimal effort, and that is anathema to quality patents the leadership allegedly is looking for

  69. KenF July 16, 2016 11:17 am

    I should add that I recognize when an examiner takes their job seriously and is putting in serious effort, including to get the case allowed in contrast to doing everything in their power to put up roadblocks, and I will call a SPE to compliment when I see that

  70. JustanExaminer July 16, 2016 11:26 am

    @Ken
    I totally agree. I’ve heard of AUs in 3600 that have a policy of no 112s. I also agree with the factions – Like you I’ve heard of at least two AUs in gaming that have totally opposite policies on 101s – one has a complete bar on all apps, the other has a complete allowance on all apps.

    Nobody can look at that and be like “that’s fine”. It’s not, nor should it be but, and here is where we probably disagree, a low allowance rate is correlated to one of those, but so is a high allowance rate, but I hear only Gene making noise about the former. BOTH are wrong, so why agitate about the one where you get denied? It’s hypocritical, and that’s my problem with Gene.

    The other thing to remember is that statistical analysis isn’t a panacea. A low or high allowance rate is not, by itself, proof of anything. Yet this is exactly the way Gene is treating it.

    The key here is “why” and that’s the analysis Gene isn’t doing because he’d have to do a lot more leg work on it. It’s entirely possible that the AU with a low allowance rate is doing everything 100% correctly, but, unless Gene shows that they aren’t – by combing through the applications they’ve examined-…why aren’t they “presumed to be innocent” (see what I did there?)

    This disparate allowance rate is also one reason why applicants file 10 different applications to the same invention but wording them differently (like Gene advocates). They want to land in an AU that has a blanket allowance policy, but that also destroys the legitimacy of the patent system and is just as wrong as slacking examiners doing a halfa$$ job.

    I may not know what the final answer is to solve this problem, but what I do know is that that answer has absolutely nothing to do with disbanding AUs based on nothing more than their allowance rate.

  71. Gene Quinn July 16, 2016 11:27 am

    Justanexaminer-

    You say: “Gene, you’re simply wrong.”

    Nope, you are wrong. The defendant in a criminal proceeding does NOT have to prove anything. The prosecutor has to earn the conviction, not the other way around. No matter how many times you suggest otherwise you will ALWAYS be wrong.

    You are also wrong with respect to the way you interpret patent law. Patent applicants are presumed to be entitled to a patent. That is why an examiner has to come up with a prima facie case.

    You say: “anything that denies the application is, de jure, incorrect.”

    I never said that every application has to be allowed without rejection. You were the one who said that applicants have the burden, like a criminal defendant, to earn a patent. The truth is the law sets things up the other way around. The examiner has the burden to come forward with a rejection. Similarly, the prosecution in a criminal case has the obligation to earn the conviction.

    It remains particularly informative that you continue to want to compare patent applicants with criminals. That speaks volumes.

    I think I missed your name and Art Unit. Please provide it. If you are going to continue to spew such nonsense here about criminal defendants having to prove they are innocent and earn their acquittal, and you continue to liken patent applicants to criminals, I want to make sure I spell your name correctly and give your Art Unit proper credit when I write about this thread.

    -Gene

  72. Gene Quinn July 16, 2016 11:31 am

    Everyone-

    I want to point out that the talk about statistics not being any evidence here is interesting to say the least.

    It is interesting that this conversation is occurring on this article, which reports the allowance rate of these Art Units going back to 2000, which creates a truly inflated allowance rate for these Art Units. The allowance rate for these Art Units over the last 18 months is reported here:

    http://www.ipwatchdog.com/2016/07/14/where-patent-applications-go-die/id=70913/

    As you can see, Art Unit 3689 has an allowance rate of 1.3% and many of these Art Units have allowance rates below 10%, with multiple Art Units at or below 5%. Obviously, something is going on. Stay tuned for my article tomorrow. I will also be following up with more next week.

    -Gene

  73. JustanExaminer July 16, 2016 11:37 am

    “The defendant in a criminal proceeding does NOT have to prove anything”

    https://www.law.cornell.edu/uscode/text/18/17

    “(b)Burden of Proof.—
    The defendant has the burden of proving the defense of insanity by clear and convincing evidence.”

    Care to keep talking?

  74. KenF July 16, 2016 11:37 am

    I think the Office needs to stop hiring examiners based solely/primarily on technical background. They need to hire examiners that can write clearly, follow an argument, and show applicant where their argument/analysis is incorrect if that is the case. They need to incentivize examiners to give a rat’s rear, and get examiners to understand that this is not just an academic exercise.

    I’m staying away from the criminal prosecution versus examination comparison because they are apples and oranges.

  75. Gene Quinn July 16, 2016 1:08 pm

    Justanexaminer-

    Once again, you did not provide your name, or your Art Unit. If you want to keep commenting here you need to do that.

    With respect to what you are saying now, so typically like an examiner to be thoroughly and completely proved wrong and then to change what you are saying and pretend you were right all along. You said that a criminal defendant needs to earn an acquittal. That is false. The prosecution has the obligation to earn a conviction. Now you want to talk about defenses as if you were referring to defenses all along. Comically idiotic.

    So does the patent applicant have the burden to prove a defense by clear and convincing evidence? Or are you now comparing what a criminal defendant needs to do if they raise a defense to a patent applicant? So I guess in your view a patent applicant must prove they are entitled to a patent by clear and convincing evidence.

    Obviously you don’t understand the law. As I’ve said earlier, applicants deserve better than an arrogant, condescending examiner like yourself who doesn’t know what they are talking about.

    -Gene

  76. Gene Quinn July 16, 2016 1:21 pm

    JustanExaminer-

    Went back and read some of your comments. I particularly read with interest how you say that a low allowance rate, presumably even a 1.3% allowance rate, is not any kind of evidence, suggestion or reason to believe the examiners in an Art Unit aren’t doing everything correctly. Interesting theory. A 1.3% allowance rate means many examiners are issuing nothing, and yet that doesn’t create any cause of concern.

    I’m sure you will be interested to read my article tomorrow. I know examiners like you think you know everything and I guess that means that every article has to be a treatise or it isn’t worth anything. Tomorrow’s article will list cases where the examiners in Art Unit 3600 have been summarily reversed by the Board on each and every rejection of each and every claim. I guess the Board was just wrong in those cases and those examiners are doing a spectacular job!

    I’ll be on this issue for a while. Already have tomorrow’s article finalized, and near finalizing my article for Monday. Then I’ll keep going back and before long it will be clear to everyone that TC 3600 is run like a Banana Republic.

    Looking forward to your apology, and your admission that criminal defendants do not have to earn an acquittal.

    -Gene

  77. KenF July 16, 2016 1:25 pm

    @Examiner,

    Insanity is an affirmative defense, meaning it has to be proven by the party (i.e., the defendant) raising it. It is not the same as defense to the prosecution’s case in chief.

    What I would like to see from you, though, is your thoughts as to whether the AFCP program has been useful or barely effective; whether pre-appeal conferences are a waste of time; and whether the Office is going to take steps to make this newfangled scheme more useful and, if so, how.

    Mike drop and back to work….

  78. JustanExaminer July 16, 2016 2:46 pm

    DELETED and JustanExaminer banned.

  79. Gene Quinn July 16, 2016 5:31 pm

    JustanExaminer has been banned. It is impossible for me to believe this person is an examiner, and if this person is an examiner god help us all.

    I grew tired of being told that criminal defendants must prove they are entitled to an acquittal. It also became offensive that an examiner would liken patent applicants to a criminal defendant over and over again.

    I don’t know whether this person is an examiner, but find it difficult to believe any examiner at the Office would hold such clearly erroneous beliefs about the law and rules. Allowing someone to continue to make a mockery of the examining corps in this way seems inappropriate to me.

    -Gene

  80. TJM July 16, 2016 6:04 pm

    Re: Justanexaminer

    Wow, he is clearly not a lawyer, or at least not a very good one. I wish I could have chimed in before he was banned, but he was so clearly wrong about the burden of proof, both for criminal defendants and for applicants. 35 USC 102 clearly says, “An applicant shall be entitled to a patent unless…” You cannot get any clearer than that, as virtually every court has understood since the patent act was written.

  81. Curious July 18, 2016 5:02 pm

    JustanExaminer has been banned. It is impossible for me to believe this person is an examiner, and if this person is an examiner god help us all.
    He kind of reminds me of “6” or “Examiner 6K” who is prolific on the other patent blog — he knows some stuff but is pretty ignorant on other things. I’ve seen plenty of examiner who like to think they are attorneys — it takes time to shoot down all their misstatements of the law. They just don’t what they don’t know.

    BTW — I was going to make the point that KenF did @77, but then realized that KenF already made that point.

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