Are patent examiners instructed to issue frivolous rejections?

By Gene Quinn
July 18, 2016

Rejected chalk outlineSadly, it is all too common for patent examiners in the E-commerce Art Units of Technology Center 3600 to be completely reversed by the Patent Trial and Appeal Board (PTAB). This is hardly shocking.

Patent examiners in various E-commerce Art Units have been telling patent attorneys and patent agents for many years that their supervisors require them to issue rejections in all cases, even going as far as to tell attorneys that they have been instructed to come up with ridiculous, bogus, frivolous rejections that clearly have no merit. Over the years this has caused some examiners to quit, choosing to leave the Patent Office altogether rather than participate in this charade. Others have requested transfers out to other areas of the Patent Office that do not operate in the same Banana Republic fashion.

The stories of examiners being told to reject at all cost are legion in the software space. The Patent Office fluffs this off as “anecdotal evidence,” but that simply isn’t true. Patent examiners are telling attorneys and agents that they have been instructed to reject, creating frivolous rejections if necessary in order to reject. That is what many patent attorneys and agents have been told. Is it true? The facts support what these examiners have been saying all along, making this far more than some “anecdotal” problem.

The reopening of cases to issue rejections after a complete reversal by the PTAB is perhaps among the most persuasive evidence that TC 3600 has a reject at all costs policy. See The Impotence of the Patent Trial and Appeal Board. The reopening of cases after a complete reversal is just a part of the overall scheme in place in TC 3600. Supervisors not only won’t authorize the issuance of the patent, but they will reopen prosecution even after a successful appeal to make sure a patent does not issue. So an applicant waits years on appeal to get relief from frivolous rejections, achieves a complete and total victory, and their reward is another bogus rejection from the same examiner who has been harassing them for years. It is no wonder many applicants just give up. If this were happening anywhere else in the world we would ridicule the system as fixed or rigged.

Time and time again the Patent Office will say they have looked into this or another matter and there is nothing to these “anecdotal” stories. I’ve been told more than once that what seems to be happening is patent examiners are blaming their supervisors when speaking with attorneys and agents rather than taking responsibility for their own independent decisions. So, according to the Patent Office the problem is the examiners, not the TC Director, not a Supervisory Patent Examiner (SPE), not a Quality Assurance Supervisor (QAS).

I’ve been told that there is no one at the Patent Office on any level requiring, suggesting or even hinting that examiners should reject patent applications, even in the E-commerce Art Units. Those examiners speaking out of turn about recalcitrant supervisors are the problem, not the supervisors. The supervisors in the Art Units and Directors in TC 3600 are exemplary employees and would love to issue patents if only they could. The patent examiners are speaking out of turn and blaming their supervisors without justification for their own actions. Really?

If I were one of the patent examiners in the E-commerce Art Units being forced by supervisors to issue bogus rejections I’d think long and hard about coming forward. The Patent Office seems to be turning a blind eye to the fundamental mistreatment of applicants in TC 3600. To fix this mess two things will need to happen. First, at least one applicant is going to need to file a writ of mandamus in the Eastern District of Virginia in order to bring the power of the federal judiciary to bear to expose what is happening. Whether successful or not, a mandamus will shed much needed light on the practices of the USPTO, and anyone familiar with the Eastern District of Virginia knows they are likely to take an extremely dim view of these types of extraordinary procedural hurdles the frustrate applicant rights and prevent judicial review. Second, one or more whistleblowing patent examiners will need to come forward and explain what is being said behind closed doors.

To put the magnitude of the problem into context, so far in 2016 the overall allowance rate for the E-commerce Art Units in TC 3600 is 11.2%, with Art Unit 3689 having an allowance rate of 1.3%. See Where Patent Applications Go to Die. If these statistics are not eye opening then nothing can ever open your eyes. If these statistics, together with the systematic reopening of prosecution when an examiner has been completely reversed by the PTAB, does not warrant an immediate investigation by the Commerce Department Inspector General then why exactly do we have an Inspector General?

These are Art Units make a practice of issuing frivolous rejections, as evidenced by the number of times examiners are reversed by the PTAB. In an earlier article I listed eleven (11) such situations over the last 10 months by TC Director Greg Vidovich, but that seems to be the tip of the iceberg. Patent examiners are so confident in their ability to harass applicants that they even tell patent attorneys what they are doing! Patent examiners proudly proclaim to applicants and attorneys that it has been years since they have issued a patent, which is clearly true based on the facts. What is an applicant supposed to do? Appeal to the PTAB? That would be great if an appeal to the PTAB mattered, but the TC Director in 3600 will simply get the PTAB decision back and authorize reopening of prosecution.

How ironic, and sad, is it that the PTAB has the authority to invalidate issued patents in post grant proceedings but has no implementing authority with respect to its decisions completely reversing even frivolous examiner rejections. This is yet another reason the PTAB is appropriately characterized a death squad. The only power the PTAB seems to have is to take rights away from property owners (i.e., patent owners). If that realization doesn’t cause patent owners to pick up their pitchforks and march for change I don’t know what ever could.

It is also truly ironic that it is applicants who are 100% successful at the PTAB that are screwed. Having been 100% successful there is nothing for the applicant to appeal to an Article III court. Therefore, the TC Director can toy with the applicant by reopening prosecution, leaving the applicant with no any ability to get to an Article III court to address this systematic and fundamental injustice. The applicant would actually be better off having won a reversal on all the truly frivolous rejections made by the examiner and then losing on one absurdly broad claim. The applicant could then appeal to an Article III court and get outside the Patent Office. I doubt even the most recalcitrant TC Director wouldn’t dare reopen prosecution after an appeal to the Federal Circuit or to the Eastern District of Virginia.

This is not how the system is supposed to work. Patent examiners are supposed to bring into effect the decision of the Board (see 37 CFR 41.50) and only in rare cases is prosecution supposed to be reopened (see 37 CFR 1.198). There is nothing in the rules or law that support the systematic reopening every case only to continue to reject claims at all costs. This renders the PTAB meaningless, at least from the point of view of the applicant.

UPDATE:

For follow-up articles on this topic please see:

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 44 Comments comments.

  1. Michael July 18, 2016 1:25 pm

    Gene, I completely agree with your analysis in this and other similar articles. I share your frustrations.

    Frankly, the standards for patentable subject matter and obviousness are now so subjective and devoid of any rational relationship to invention that each undermines and threatens the patent system in the US.

    Some say that the history of patents in the US changes over time along a continuum between two extremes – mostly all claims are allowable to mostly no claims are allowable. However, the current circumstances are different in that very powerful and well-funded interests have infected the executive, legislative, and judicial branches of government and even the average person with the belief that patents are somehow anti-capitalist, anti-competitive, and just downright evil. These powerful and well-funded interests are not going away any time soon.

    It is not clear to me how the damage will be undone.

  2. Paul Morinville July 18, 2016 1:48 pm

    Michael… Amen brother.

  3. Alice Donogood July 18, 2016 3:11 pm

    Gene-

    You raise some interesting issues that, frankly, need addressing; however, those issues are obscured by the litany of falsified “evidence” and unsubstantiated claims you make.

    Supervisors are not requiring Examiner’s to issue rejections “in all cases” as you allege. Neither are Examiners being instructed to come up with “frivolous rejections that have no merit”. On the contrary, in my experience with TC 3600, the Supervisors and Examiners have adequately acted within the bounds of the guidance provided from the courts and the office with respect to determinations of eligibility.

    More to your particular point regarding reopening after reversal, there is a valid point to be made regarding the issue of reopening particularly with respect to the application of new prior art rejections. That being said, many of the reopening stem from implementing the aforementioned guidance in light of the Alice decision. In many of these cases, an Examiner was reversed on art issues with the PTAB remaining silent as to eligibility issues in view of Alice. This leaves the Examiner and the Office in a no win position: Mail an obviously incorrect notice of allowance, or reopen to apply current eligibility standards.

    As a whole, I think you are missing a key element with your rant: In many of the PTAB decisions you are attempting to address, the Alice decision was not applicable until only after the decision was made by the examiner to proceed with an examiner’s answer. You cannot possibly expect TC 3600 to ignore current case law and guidance in such situations. Your rant would ring more true if not for the intervening nature of Alice, and if it focused on reopening and rejections that applied new art rejections rather than those that simply reopened to apply rejections commensurate with current policy (i.e. 101).

    Your arguments would also ring more true if they were not steeped in unfounded allegations about secret directives and their impact on employee retention. If anything, my experience with TC 3600 has been that examiner’s strive to provide quality feedback for overcoming rejections under 101 in an effort to issue quality patents that will stand up to judicial scrutiny. In many of the cases filed before Alice, specifications simply lacked the detail now seemingly required to reach eligibility. If you want to place blame, look to the Alice decision itself and the CAFC’s treatment of eligibility (both before and after Alice).

    You also do yourself no favors by using anecdotal evidence, and even your attempts to refute the “evidence” as anecdotal is itself, anecdotal.

    Your inflammatory attempts to rouse the rabble are transparent to those of us with an understanding of the law. While it seems unfair to “win 100%” at the PTAB only to have an examiner reopen and provide a new grounds of rejection, your entire premise is flawed because it fails to acknowledge the monumental shift in policy stemming from the Alice decision and the timing of that decision with respect to so many of the decisions you are referring to. As a whole, it seems like you’ve willingly ignored this fact. In place of addressing more serious issues under the implementation of the Alice decision, offered an overly emotional rant much like a petulant child who isn’t getting his way.

  4. Gene Quinn July 18, 2016 4:33 pm

    Alice Donogood-

    I have falsified nothing.

    Given that you use a false name and a fake e-mail I won’t waste my time responding you other than this… How precious is it that you claim I’m falsifying evidence when you use a fake name and a fake e-mail. Thanks for the laugh.

    If you choose to come out from the shadows and cease being a coward I will be happy to address anything you raise. We both know that won’t happen though.

    -Gene

  5. The APA Matters July 18, 2016 5:28 pm

    Let me add my deep, sincere thanks to the chorus of all the spoken and unspoken others for you — and your caring commentators and fellow investigators — willingness to investigate and report on these travesties of justice; including naming names.

    Regarding current and former good-hearted, fair-minded, arm-twisted, rejection-ordered TC 3600 examiners (and SPEs) coming forward, maybe you could issue an invitation / article for them to contact you directly with how they’re being treated and what’s been going on behind the scenes; with you of course guaranteeing their anonymity. Folks know you can be trusted.

    And is it time to once again interview PTO / PTAB leadership to find out what they know, what they don’t, and what if anything they’re going to do about the fire hose of injustice emanating from TC 3600?

  6. Curious July 18, 2016 5:32 pm

    On the contrary, in my experience with TC 3600, the Supervisors and Examiners have adequately acted within the bounds of the guidance provided from the courts and the office with respect to determinations of eligibility
    LOL — I don’t recall courts providing guidance that 95% of inventions that are classified in the business method groups are directed to patent ineligible subject matter. Perhaps you missed the point (by Gene) identifying art units with very similar subject matter but having vastly disparate rates of allowance. Whether a patent is issued or not shouldn’t depend upon how the application is classified and to which art unit the application is assigned.

    If anything, my experience with TC 3600 has been that examiner’s strive to provide quality feedback for overcoming rejections under 101 in an effort to issue quality patents that will stand up to judicial scrutiny.
    LOL (your killing me) … what quality feedback are they providing when the ratio of allowances to abandonments are in the low single digits in many art units? What kind of feedback is being provided when I know of examiners who have been working for at least several years without issuing a single patent? Do you actually work in TC 3600 or are you just making $t up?

    Your rant would ring more true if not for the intervening nature of Alice
    The essential portion of Supreme Court’s analysis within Alice:
    In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.
    Nothing about this analysis leads me to conclude that the Courts have deemed nearly all business methods to be directed to patent ineligible subject matter. However, that is how the business method side of TC 3600 has been rolling for the last 2 years.

    You also do yourself no favors by using anecdotal evidence
    Anecdotal evidence? Since I’m the one of those that gather a decent portion of the evidence, I can tell you that, for certain art units, I looked at EVERY decision on appeal that was associated with the art unit over a two-year period of time. This is hardly “anecdotal.” The reopening of prosecution after reversal at the Board isn’t just some occasional happening, it is happening NEARLY ALL OF THE TIME in the business method art units of TC 3600.

    it fails to acknowledge the monumental shift in policy stemming from the Alice decision
    Shift in policy? Congress makes policy — not the courts. The executive branch (e.g., the USPTO) follows the law — they don’t get to make it. 35 USC 101 has been essentially unchanged for over 60 years. No policy change has been made by Congress (except for adding section to the USC recognizing the existence of business methods as patentable subject matter — see discussion in Bilski) in the mean time. Your admission as to a “shift in policy” evidences the very issue that many of us “rabble” recognize — both the courts and the USPTO have constitutionally overstepped their bounds by reading limitations into 35 USC 101 not intended by Congress. The constitutional role of Congress has been usurped, and USPTO (and in particular the management of TC 3600) has been complicit in doing so. Regardless, Alice did not represent a monumental shift from Bilski — read the decision.

    I’m sorry, but Gene is well within his rights to be emotional about how the courts and the USPTO are stomping on the US Constitution and the United States Code.

  7. Alice Donogood July 18, 2016 5:45 pm

    Gene-

    You seem fine in other comment sections responding to anonymous poster who agree with you. A bit hypocritical wouldn’t you say? I have reasons for maintaining anonymity – what are your reasons for your fabrications about the USPTO? Perhaps pandering to the masses for clicks?

    I’ve exposed the flaws in your reasoning, and your response was nothing more than a classic deflection.

    I’d respectfully ask you to address the fact that Alice came along after these applications were sent to the board, rather than ignore this fact and expect examiners to grant patents despite apparent ineligibility.

  8. Curious July 18, 2016 5:59 pm

    I’d respectfully ask you to address the fact that Alice came along after these applications were sent to the board, rather than ignore this fact and expect examiners to grant patents despite apparent ineligibility.
    The Board can introduce new grounds of rejection under 35 USC 101, and they haven’t been shy about doing it. Additionally, some of those reopened applications had 101 rejections that were reversed, and the Board could have easily introduced reasons different than the Examiner (as new grounds) in making those rejections. The Board, however, chose not to. Despite this, nearly EVERY decision is being reopened. Moreover, in identifying over 50 such applications myself, I can tell you that a good portion of these reopened applications have 101 rejections that don’t even meet the barest of requirements set forth in the USPTO’s many memos on the subject.

    BTW — calling Gene a liar (i.e., “what are your reasons for your fabrications about the USPTO”) is a good way to get banned. Although Gene can adequately defend himself, let me chime in. He is using is REAL name and has a reputation to uphold in the patent community, with which he is very well connected. I very much doubt that Gene will put his very public reputation on the line (and the many, many years he has been developing this blog) with blatant “fabrications,” as you suggest.

    As I have noted in other posts, the continual and blatant disregard of the law by the business method side of TC 3600 has been going on for at least a decade — well before Bilski, Alice, Mayo. TC 3600 has been looking for an excuse to justly not issuing any patent for a very long time and has found it in Alice (despite the language of the Alice decision not actually giving them that excuse).

    Regardless, get your posts in while you can — I doubt you’ll be posting here for very long.

  9. Gene Quinn July 18, 2016 6:02 pm

    Alice Donogood-

    You say: “You seem fine in other comment sections responding to anonymous poster who agree with you. A bit hypocritical wouldn’t you say?”

    Yes. Absolutely hypocritical to respond to anonymous individuals who agree with me and those who don’t. In virtually all cases though others who are using an anonymous name do NOT also use a fake e-mail address. The rules here have always been if you use both a fake name and a fake e-mail address you get little latitude. You erroneously said I falsified what I’m reporting. That is 100% untrue. So given that you have said something that is utterly false and you choose to remain absolutely anonymous I choose to ignore you.

    You say: “I’ve exposed the flaws in your reasoning, and your response was nothing more than a classic deflection.”

    First, you couldn’t have exposed anything because I falsified nothing. Second, I stopped reading when you said I falsified (which is a lie) and I noticed you didn’t use a real name or a real e-mail address.

    You say: “I’d respectfully ask you to address the fact that Alice came along after these applications were sent to the board…”

    I address that in the article, which obviously you didn’t read or understand. Despite the fact that you are an anonymous coward liar… The Board reviewed these claims. The Board knows very well about Alice and the 2 part test. The Board has the authority to issue new grounds of rejection. The Board has the authority to remand to the examiner. The Board did not see any Alice problems, they did not issue new grounds of rejection and they did not remand to the examiner.

    If you had read the article you would have understood that and you wouldn’t have likely charged me with falsifying evidence. This is more of a response than you deserve. Given the false accusations you’ve made against me, if you want to continue this discussion here you will need to provide your name. We deserve to know who you are, what your bias is and why you so carelessly make a ridiculous accusation against me.

    -Gene

  10. Anon July 18, 2016 7:36 pm

    Purely a guess, but from the tone and rampant inaccuracies of the writing, coupled with an “extensive” post at the other blog. I would say that your Alice Donogood is using false credentials because his real ones would identify him as the banned poster known as “6.”

    I would also reflect that the emotion being seen reminds me of the emotion of another recently banned poster, one whose content (aside from the equally-exchanged inflammatory posts) appears to mirror the content of Gene’s evolving conclusions (you two are more alike – in content – than either of you might realize, if you step back from the heat of the recent exchanges.

    I am curious if some mending might happen (with harsh words from both sides reevaluated).

  11. James Toupin July 18, 2016 9:53 pm

    Having viewed the problem from a perspective of having management responsibility for the Board, I doubt the empirical accuracy of the observation as well as the diagnosis. What the APJs saw, as they expressed it to me, was too often a failure of compact prosecution. That is, determined on a particular rejection, the examiner too often ignored other, better grounds of rejection. The frustration the APJs reflected to me was that, when they overturned the erroneous ground, the examiner simply let the case go to issue when other, better rejection should have been applied. So it’s important, when an attorney is frustrated after having won at the Board and the examiner then enters a rejection, (1) to bear in mind those cases where that event does not occur when it should and (2) to distinguish cases where an examiner is acting somehow vindictively from cases where a failure to apply all good grounds of rejection at the outset is being corrected. My knowledge, of course, is altogether anecdotal and out of date, but I doubt that these factors no longer exist.

  12. Lost In Norway July 19, 2016 5:14 am

    I asked this in your previous article, but what problem does TC 3600 have with patents? Honestly it turns into someone else’s problem after it is granted (IPR and PGR). If there is never going to be patentable subject matter in TC 3600, that’s an issue for the director and not Vidovich.

    Do you know if this happens in more engineering kinds of units, or was Alice the excuse to invalidate all hope of patents?

  13. Benny July 19, 2016 5:26 am

    Anon,
    Not me, if that was what you were hinting. Our applications don’t go to TC 3600.

  14. Ely Erlich July 19, 2016 5:43 am

    “Alice” it doesn’t seem the recent “Alice” decision is the problem.

    Referring to Gene’s earlier article, I plugged in the Examiner’s name for the first case Gene mentioned (ARAQUE JR, GERARDO) into the patent analytics website Examiner Ninja, and it seems this Examiner has barely granted a patent since 2002 (total history – 18 issued (a third of which in 2001), 216 abandoned,80 pending).

    How can you explain the amount of financial resources an applicant has to use to get an application issued for that unit (2674 days average for that Examiner, 2446 days for his unit, and 1104 AVERAGE for the rest of the USPTO)?

  15. Prizzi's Glory July 19, 2016 7:10 am

    Here are two of the TC 3600 procedures from the SAWS FOIA document.

    https://drive.google.com/file/d/0B73ewaPLaegFTzFxMEcwQ3RWQjA/view?usp=sharing

    These procedures hardly seem like a by-the-book application of the APA, but one must be even more concerned in carrying out these procedures PTAB judges have lied on official US government documents. Not only does such mendacity constitute a serious violation of 18 USC 1001 and of 18 USC 371, but if SAWS itself meets the definition of a full-fledged criminal conspiracy against the US government (it seems to do so), what could possibly be more corrosive of the US political and government system than for senior government officials to lie in matters of intellectual property especially when these lies seem to have involved a good part of the examination staff in criminal acts?

    TC 3600 is only the tip of the iceberg, and we are looking at a scandal potentially orders of magnitude worse than Teapot Dome.

  16. Anonymous July 19, 2016 7:26 am

    Well said, that man! It often struck me that at least some of the USPTO Examiners were chosen on the basis of a rather unique combination of stupidity, incompetence, laziness and sheer bloody-mindedness – in fact, right down there with examiners from Pakistan (am I allowed to say that?). You know they couldn’t POSSIBLY have read the stuff properly. I realize that they are often under considerable pressure, but there’s simply no excuse for some of the nonsense that they come out with.

  17. Prizzi's Glory July 19, 2016 7:27 am

    Following are the groups for which Vidovich is TC Director. Do they all have similar allowance rates?

    3621 – Business Crypto

    3622 – Incentive Programs, Coupons

    3623 – Operations Research

    3624 – Operations Research

    3625 – E-Shopping

    3626 – Health Care, Insurance

    3627 – Point of Sale, Inventory, Accounting

    3628 – Cost/Price, Transportation, Reservations

    3629 – Business Processing and Modeling, Workflow Management, Customer Service, Education Administration, HR/Employment, Social Networking, Personal Safety/Security, Product Rating/Recommendation

    3682 – Incentive Programs, Coupons

    3682 – Operations Research, Voting

    3684 – Operations Research, Voting

    3685 – Business Crypto

    3686 – Health Care, Insurance

    3687 – Point of Sale, Inventory, Accounting

    3688 – Incentive Programs, Coupons

    3689 – Business Processing, Cost/Price, Reservations

    3691 – Finance & Banking, Accounting

    3692 – Finance & Banking, Accounting

    3693 – Finance & Banking, Accounting

    3694 – Finance & Banking, Accounting

    3695 – Finance & Banking, Accounting

    It is trivial to envision valid IP territories in which inventors could stake out valid claims and that are within the purview of these arts groups.

    High frequency traders use many methods that are not effectively computable and that are not ages-old finance techniques.

    Are there no patent-eligible or patentable claims to methods of inserting advertising in streaming video via automatic exchange bidding?

  18. Prizzi's Glory July 19, 2016 7:31 am

    Here are two of the TC 3600 procedures from the SAWS FOIA document.

    https://drive.google.com/file/d/0B73ewaPLaegFTzFxMEcwQ3RWQjA/view?usp=sharing

    These procedures hardly seem like a by-the-book application of the APA, but one must be even more concerned that in carrying out these procedures PTAB judges have lied on official US government documents.

    Not only does such mendacity constitute a serious violation of 18 USC 1001 and of 18 USC 371, but if SAWS itself meets the definition of a full-fledged criminal conspiracy against the US government (it seems to do so), what could possibly be more corrosive of the US political and government system than for senior government officials to lie in matters of intellectual property especially when these lies seem to have involved a good part of the examination staff in criminal acts?

    TC 3600 is only the tip of the iceberg, and we are looking at a scandal potentially orders of magnitude worse than Teapot Dome.

  19. Prizzi's Glory July 19, 2016 7:33 am

    Following are the groups for which Vidovich is TC Director. Do they all have similar allowance rates?

    3621 – Business Crypto

    3622 – Incentive Programs, Coupons

    3623 – Operations Research

    3624 – Operations Research

    3625 – E-Shopping

    3626 – Health Care, Insurance

    3627 – Point of Sale, Inventory, Accounting

    3628 – Cost/Price, Transportation, Reservations

    3629 – Business Processing and Modeling, Workflow Management, Customer Service, Education Administration, HR/Employment, Social Networking, Personal Safety/Security, Product Rating/Recommendation

    3682 – Incentive Programs, Coupons

    3682 – Operations Research, Voting

    3684 – Operations Research, Voting

    3685 – Business Crypto

    3686 – Health Care, Insurance

    3687 – Point of Sale, Inventory, Accounting

    3688 – Incentive Programs, Coupons

    3689 – Business Processing, Cost/Price, Reservations

    3691 – Finance & Banking, Accounting

    3692 – Finance & Banking, Accounting

    3693 – Finance & Banking, Accounting

    3694 – Finance & Banking, Accounting

    3695 – Finance & Banking, Accounting

    It is trivial to envision valid IP territories in which inventors could stake out valid claims and that are within the purview of these arts groups.

    High frequency traders use many methods that are not effectively computable and that are not ages-old finance techniques.

    Are there no possible patent-eligible or patentable claims to methods of inserting advertising in streaming video via automatic exchange bidding?

  20. GGF July 19, 2016 9:23 am

    Would it be worth filing TC3600 cases in other countries (e.g. Canada), filing a PCT, and then entering the USPTO 30 months later? The Canadian application would likely have issued and then you could use a PPH into the US. It would be interesting to see if the allowance rates of those applications are also abysmal given the PPH totes that PPH applications have a higher allowance rate.

  21. Davis July 19, 2016 9:49 am

    I think two main points need to be made here:

    1) The Office action is NOT a technical document, it is a legal document. Many would consider this obvious, however, in the context of how it is viewed at the PTO BY the PTO it’s clear that it’s considered more of a technical document. This gets to the heart of the issue – asking technically minded people to get knee deep in the law when most of them never have sued someone for unpaid legal fees 😉

    2) Number 1 isn’t really an issue in most TCs because the technology is fairly straightforward (slight grey area with the chemical arts). Now, before this devolves into a pedantic “Well I’ve experienced blah in TC 1234”, yes, this is a problem across the office, but it’s less of a concern when you can point to a physical structure. And this is point 2 – Business Methods was created circa 2000 and before that nobody in the corps had or knew about Business Methods (I want to abbreviate that, but it looks immature). So they had to for a TC ad hoc from people who had been pointing to features their entire career. Combine that with the emphasis on reject reject reject and you get you have the beginning of the issues Gene is bringing up.

    Once that original crop of personnel rose up in business methods, their crystallized perspective and thoughts set the tone for all of 3600. Now, new examiners, who often have both a technical and legal degree, are told the old way of doing things. Element 2 is even a bigger issue because business methods is far more legally oriented than any other TC at the office.

    So it’s kind of a perfect storm between an incorrect viewpoint about what the office sends out and an institutionalized ideology from the original group who was thrown into it through no fault of their own. It’s a difficult situation

  22. Mike Coblenz July 19, 2016 9:52 am

    Gene:

    I think this is an issue PTO wide, and not just confined to TC3600. Though perhaps it is worse there.

    I had an examiner interview last week, and after I explained how the prior art worked the examiner said “oh, I didn’t read the specification.” One of the figures in the prior art had a feature that looked like one of the elements of the application, and that was as far as the examiner took the analysis. In my experience this is a very common approach. But this is the first time an examiner actually admitted it.

    I have also had a number of applications that received a final rejection, I file an Response After Final, the examiner responds with a one line Advisory Action saying the arguments were considered and found non-persuasive, I file an RCE with the same arguments as the RAF, and in the first office action the examiner agrees with my arguments.

    I don’t know if the problem is that the examiners are overworked, under trained, or poorly managed. I do know that things seem to be getting worse.

  23. Gene Quinn July 19, 2016 10:07 am

    Prizzi’s Glory-

    Most of the Art Units you mention, which I’ve been referring to as the E-commerce Art Units since that is how the USPTO refers to them on at least one of their TC 3600 web pages, have an allowance rate of 10% or less since the start of 2016. See:

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

    As you can imagine, there is no shortage of things to write about TC 3600 and these Art Units. So far I’ve only focused on 3689, but will be expanding my research in the coming weeks and months.

    -Gene

  24. Gene Quinn July 19, 2016 10:10 am

    Mike-

    I’ve heard from other attorneys that have had the same experiences as you. It seems common knowledge that examiners do not read the specification. I’ve also heard of attorneys who have made identical arguments in RCEs as they did in After Final filings, exactly like you mention.

    If you or anyone has any Application Nos. you’d like me to take a look at in PAIR please let me know. Exposing these games is important, particularly as the USPTO continues on their “quality initiatives,” which seem to be an attempt to blame practitioners and applicants for the problems of the Office while diverting all responsibility from examiners.

  25. Paul F. Morgan July 19, 2016 12:23 pm

    Since I also think there is some fire in all this smoke, may I make a small suggestion that would at least reduce some of the time delays of all applications with rejections reversed and returned by the PTAB to the Examining Corps to then get another, new, rejection?
    Is there any good reason why the PTAB cannot logically take up application rejection appeals for decisions in the order of their original filing dates? This would also reduce dangerous “submarine” application pendencies, delays of important reissues, etc.
    Delays in filing Examiners Answers in appeals could also be addressed.

  26. Edward Heller July 19, 2016 6:54 pm

    I think the statutory requirement that a patent issue in 3 years lest there be term added can be used by any one who is not getting diligent prosecution by the PTO in a combined APA/145 suit after the application has been to the PTAB at least once. The result of the suit should be an order by the court to issue the patent if it meets the statutory requirements.

  27. Dale B Halling July 19, 2016 7:08 pm

    Thank you for this series of articles

  28. Anon July 19, 2016 8:20 pm

    Mr. Heller @ 26 – that benefit is stopped the moment you have even a portion of a case lost.

  29. Curious July 19, 2016 9:11 pm

    I think the statutory requirement that a patent issue in 3 years lest there be term added can be used by any one who is not getting diligent prosecution by the PTO in a combined APA/145 suit after the application has been to the PTAB at least once.
    Assuming, for sake of argument, that whatever you say is accurate. What applicant, except those that are extremely well-heeled and extremely motivated, is going to take advantage of that procedure? One of the over-arching points of Gene’s expose is the lengths that TC 3600 have gone to wear done applicants. Applicants do not have endless funds to prosecute their applications.

    From experience, I can say that most unsophisticated applicants get very frustrated very fast with the USPTO’s (in)action — so frustrated that many just give up in the face of TC 3600’s continued intransigence. This is precisely the goal of the USPTO. TC 3600 is far more concerned about its own reputation among the anti-patent crowd than doing their job. For that reason, they’ll do anything (legal or extralegal) to avoid issuing patents.

  30. Edward Heller July 20, 2016 12:29 pm

    Curious, it is my understanding that most of these held up applications are held by major companies who can well afford to take the issue to the District Court. The very first one I looked at was held by Rockwell, one of the largest corporations in the world. I understand that IBM has hundreds of applications that are affected. Surely one of these companies would pioneered the path for others by establishing precedent and exposing the truth like Gene has here.

  31. Pat N. Trole July 20, 2016 12:37 pm

    Mike,

    I’ve experienced that same process over and over again. I don’t think it’s an issue of being overworked, under-trained, or poorly managed (although there is a lot of evidence to suggest that they are under-trained and poorly managed). I think it’s the fact that they don’t get credit towards their “count” for after-final responses and responding to the after-final responses, but they do get a count credit when an RCE is filed. They are incentivized to make applicants file RCEs to fulfill their count requirements.

  32. Lawrence Glaser July 20, 2016 12:46 pm

    US 8041604 Took 13 years. Board review denied relief. By the time it was allowed, 688K of fees had amassed. Had to sell it. Was supposed to be worth a lot of money. It did sell for 7 figures with only 7 years left on it. PTO also refused to extend its life. What am I supposed to think and feel about this? I plod on. US 7462485. I achieve the unthinkable. A solution to HIV and other viral infection. Government and Universities group together and steal it. NOT ONE INQUIRY since it issued and yes, I have reached out to them. Its not a fair system out there.

  33. staff July 20, 2016 7:02 pm

    ‘Patent examiners are telling attorneys and agents that they have been instructed to reject’

    Inventors and small entities will tell you and are convinced the patent system is in shambles and is now a sham. If we have to fight to get or keep our patents, we go out of business. Meanwhile the large multinationals who now routinely steal our inventions get off Scott free and laugh all the way to the bank. The American patent system is in crisis and so is America.

    For our position and the changes we advocate to truly reform the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com/category/our-position/
    or, contact us at aifj@mail.com

  34. Night Writer July 20, 2016 7:47 pm

    @3 Alice. A couple of points: 1) There is a transparency problem. We saw that with SAWS (I have experienced this with one application); 2) The PTO is too smart to say no applications will be allowed to the examiners, but what they have said is that the standard to get one allowed is monumental; And, 3) the issue is whether the standards in 3600 go beyond Alice.

    And, the real problem is that Alice is not law but equity and judicial activism that is beyond belief.

  35. Night Writer July 20, 2016 7:52 pm

    @3 Alice: Also, to some extent I agree with your characterization of Gene, but I feel the same way. The problem is that with Alice we have no law to back us up. There is no law with Alice. We now have a system where what is eligible for patentability is determined by the fact finder–here TC of 3600, but probably Lee and thus Google.

    I think that is a lot to scream about. I interviewed two examiners from 3600 this week. Both said they had not allowed a case in over a year and that realistically that they would not be able to allow either case and that I should appeal and hope the “law” changes. There is a lot to scream about when the PTO gives up the 103 rejection but maintains the 101 rejection.

  36. step back July 21, 2016 12:07 pm

    @35, Night Writer,

    I too recently interviewed ab examiner in 3600 and got similar feedback, that many applicants are simply “parking” their apps in the queue into the PTAB with hopes that by the time their app gets heard, the Alice/Mayo tests will have been tossed. However it was this particular examiner’s personal opinion that Alice/Mayo will stick and people are wasting their time filing into this examiner’s tech group –they are not letting anything pass through their gates. That’s how they are instructed and that’s how they play the game -no matter what we argue from the applicant’s side. Pretty grim prospects for inventors whose apps get assigned into 3600.

  37. Night Writer July 21, 2016 3:16 pm

    @36 step back: Yes indeed. Grim. My prediction is that trade secrets are going to become much more popular now that –coincidentally–new trade secret federal law appeared just as the patent system was crippled by Alice and the AIA.

  38. Truth July 23, 2016 2:55 am

    @32

    This is the kind of thing that really weakens your position Gene….

  39. Anon July 23, 2016 12:13 pm

    Night Writer,

    That was no coincidence.

  40. Gene Quinn July 24, 2016 1:15 pm

    Truth-

    Not sure what you think weakens my position, but my last comment was @24.

    Of course, I’m hardly worried about what you think weakens my position given you use a fictitious name and a fake e-mail. Seriously? You have the audacity to claim my position is weak and use the moniker “Truth” while you hide in the shadows? Interesting.

  41. Anon July 25, 2016 6:35 am

    Gene,

    Let’s draw a distinction between pseudonymous and anonymous communication (widely recognized as valuable dating at least as far back as our Founding Fathers), and any type of “hiding in the shadows.” Even you provide a vehicle for such a rhetorical device by allowing stories to be posted under “Sue D. Nym” and the like.

    As you are aware, I go by the moniker Anon. But I daresay that it could not be said that I so any type of “hiding in the shadows.”

    Comments such as by “Truth” can be distinguished from comments from pseudonymous and anonymous posters by at least two factors: lack of supporting argument (visible to all) and lack of real e-mail address (visible only to the moderator).

    Either (and especially both) of these distinctions should earn a label different than (and one that does not ‘paint with the same brush’) those of us that partake in discussions without using our actual names.

    By the way, I specifically use the moniker “Anon” so that there is no hint of any “borrowed authority” coming from my actual name. One that uses their actual name can be said to run a risk/reward situation with that name – at the same time “appearing to be more open” while also “banking” on any cache from the name in other situations other than the conversation at hand.

    I do not begrudge anyone from using the rhetorical device of such “borrowed authority,” and would merely point out that such use does expand the arena of critical reply to the basis of such authority.

    Likewise though, I would ask (nay demand) that instead of “borrowed authority,” that the comments from those such as myself be reviewed in any manner of critical thinking by looking to the contents of what is said (the item that all can see). That there are those who further provide fake emails AND have little or no or even simply “wrong” content should not be used to impugn a perfectly legitimate and time-honored tradition of dialogue.

  42. Gene Quinn July 25, 2016 9:33 am

    Anon-

    Agreed. There is a big difference between pseudonymous and anonymous. As I think I’ve pointed out previously, although you use “Anon” as your moniker and remain anonymous to others here, you are just using a pseudonym.

    The problem I have is with the drive by scathing comments by those who use a fake name and a fake e-mail address. That leaves no ability to contact the person, know who they are or what their biases may be, of course they typically are quick to accuse others of bias (and worse) as they hide completely.

    As for Sue D. Nym, they are not all written by the same person, but occasionally someone really wants, or needs, to remain anonymous so we use that pseudonym. I know who they are and have reviewed the articles and feel they are worth publishing even without a real name attached.

    -Gene

  43. Anon July 25, 2016 7:20 pm

    Thanks Gene – may I suggest that you walk down to the local coffee shop and offer a pizza to the group there to create a software mechanism that (without needing your assistance) can immediately check to see if a provided email address is a legitimate address, and if legitimate (and is a new user) immediately notifies the poster that they must “verify” identity? If the email address is not legitimate, immediately notify the poster that a legitimate address really is required, and log the location of the poster and perhaps employ a multiple “strike” rule before that location is blacklisted.

    You should have the problem fixed by Monday. 🙂

  44. Urko October 4, 2016 9:37 pm

    You live in WashDC long enough, you get pretty dang cynical — enough bi-partisan horse-apples to drown a horse.

    Yet, IMHO, data from the Ombudsman’s office (probably under privacy-seal) would make Gene’s case. Which, BTW, I agree with, from personal experience.