http://www.ipwatchdog.com Patents, Software Patents, Patent Applications & Patent Law Wed, 19 Jun 2013 18:32:00 +0000 en-US hourly 1 http://wordpress.org/?v=3.5.1 http://www.ipwatchdog.com/2013/05/21/uspto-modifies-after-final-amendment-pilot-program/id=40640/ http://www.ipwatchdog.com/2013/05/21/uspto-modifies-after-final-amendment-pilot-program/id=40640/#comments Tue, 21 May 2013 18:04:03 +0000 Gene Quinn http://www.ipwatchdog.com/?p=40640 Related posts:

1. New PTO Initiative Gives More Opportunities to Amend After FinalAll and all this seems like a positive development. If you do provide a claim set that defines the invention from broad to narrow it seems extremely likely that at least some claims could be obtained in a case given that amendments can now be filed if they place the application in condition for allowance by adding one or more new limitations that require only a limited amount of further consideration or search. Assuming that the Patent Examiners do search the disclosure, like they are supposed to, and not just the initial claim set, allowable matter should be present and...
2. USPTO Extends After Final Pilot; USPTO Adds Advancement of Examination Option to Law School Clinic ProgramIf you have not tried to use the After Final Pilot you should really give it a try. At our firm we have found examiners quite willing to work with us After Final under the Pilot Program and have had successful results. While not appropriate to do everything you really may want to do After Final, many times you can make at least some substantive changes that would have normally required the filing of an RCE or Continuation. I personally think the Pilot has already proven to be a success and hope that the USPTO will continue to extend the...
3. USPTO Introduces Quick Path IDS Submission Pilot ProgramIn the QPIDS pilot, IDS submissions will be considered by the examiner before determining whether prosecution should be reopened. Prosecution will only be reopened where the examiner determines that reopening prosecution is necessary to address an item of information in the IDS. When the items of information in the IDS do not require prosecution to be reopened, the application will return to issue, thereby eliminating the delays and costs associated with RCE practice....

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1. Patent Attorney Asks Examiner “Are you drunk?”Are you drunk? No, seriously... are you drinking scotch and whiskey with a side of crack cocaine while you "examine" patent applications? (Heavy emphasis on the quotes.) Do you just mail merge rejection letters from your home? Is that what taxpayers are getting in exchange for your services? Have you even read the patent application? I'm curious. Because you either haven't read the patent application or are... (I don't want to say the "R" word) "Special."...
2. PatentCore Joins Forces with LexisNexis® on Patent Advisor™Reed Technology and Information Services Inc., a part of the LexisNexis® family and a provider of content management services, announced earlier today that it has joined forces with PatentCore. You may recall that PatentCore is a publisher of online Patent Office analytics, which for the first time has given the patent bar and public a snapshot look at what goes on inside the Patent Office Art Unit by Art Unit and patent examiner by patent examiner....
3. A Patent Bigfoot? The Mythical First Action Allowances DO Exist!Top 50 Law Firms with the most first action allowances according to PatentCore data. But where are these first action allowances coming from? All over the Patent Office really. They occur with plants (1661), organic compounds (1621, 1625, 1626), batteries (1725), active solid state devices (2818), electrical generators or motors (2834), optical systems and elements (2873), optics measuring and testing (2877), vehicle fenders (3612), data processing (3661), aeronautics and astronautics (3662), internal combustion engines (3748), valves (3751, 3753) and elsewhere throughout the USPTO....

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1. PatentCore Joins Forces with LexisNexis® on Patent Advisor™Reed Technology and Information Services Inc., a part of the LexisNexis® family and a provider of content management services, announced earlier today that it has joined forces with PatentCore. You may recall that PatentCore is a publisher of online Patent Office analytics, which for the first time has given the patent bar and public a snapshot look at what goes on inside the Patent Office Art Unit by Art Unit and patent examiner by patent examiner....
2. The RCE Backlog: A Critical Patent Office ProblemThe backlog of unexamined patent applications was down over 15.1% in September 2012, compared with October 2010. At the same time, however, the number of unexamined RCE filings grew 95.56%, after peaking at 103.93% in August 2012. In the column above labeled “Totals,” I added the number of unexamined patent application with the number of unexamined RCE filings. When you consider all of these unexamined filings the progress of the USPTO is more modest. There is not a 15.1% dip, but rather a 8.05% dip in unexamined patent filings over this interval. It seems rather clear that the USPTO has...
3. Business Methods by the Numbers: A Look Inside PTO Class 705What these numbers tell you is if your application is in Art Unit 3622 or 3689 you are in for a long wait to obtain a patent. The numbers also show that if you carry the case all the way through appeal there is quite a high success rate for applicants; 66.7% when in Art Unit 3622 and 71.4% when in Art Unit 3689. It is hard to know for sure what is going on in Art Units 3622 and 3689, but one number jumps out at me as particularly alarming. In Art Unit 3689 nearly 4 out of 5...

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1. Will the USPTO Outreach Fix the RCE Backlog?The problem of the RCE backlog is a function of the prosecution dynamic and lack of meaningful oversight into areas where RCEs are common and patents issue only after going on the appeal track. Still, in the press release issued by the USPTO recently discussing the RCE backlog and USPTO Outreach, Acting Director Teresa Rea said: "One of the purposes of this outreach effort is not to eliminate RCE practice, but to enable applicants to better understand the full range of alternative options we have available during the examination process.” This sounds a like the USPTO is blaming the patent...
2. PatentCore Joins Forces with LexisNexis® on Patent Advisor™Reed Technology and Information Services Inc., a part of the LexisNexis® family and a provider of content management services, announced earlier today that it has joined forces with PatentCore. You may recall that PatentCore is a publisher of online Patent Office analytics, which for the first time has given the patent bar and public a snapshot look at what goes on inside the Patent Office Art Unit by Art Unit and patent examiner by patent examiner....
3. Allowance Rates for Art Units Examining Business MethodsIf I were a patent examiner that hadn't issued patents for years I wouldn't want anyone to know that either. Similarly, if I were a Supervisory Patent Examiner (SPE) in an Art Unit that routinely only issued patents after a long drawn out appeal process that resulted in the Board overturning the rejections I wouldn't want the public to know about that either. Sadly, this type of gaming exists at the Patent Office. There are examiners who only rarely issue patents and Art Units that openly tell patent attorneys that they don't issue patents unless ordered to do so by the...

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1. Allowance Rates for Art Units Examining Business MethodsIf I were a patent examiner that hadn't issued patents for years I wouldn't want anyone to know that either. Similarly, if I were a Supervisory Patent Examiner (SPE) in an Art Unit that routinely only issued patents after a long drawn out appeal process that resulted in the Board overturning the rejections I wouldn't want the public to know about that either. Sadly, this type of gaming exists at the Patent Office. There are examiners who only rarely issue patents and Art Units that openly tell patent attorneys that they don't issue patents unless ordered to do so by the...
2. Patent Strategy: Discovering Crucial Patent Examiner DataWhat if you could have a crystal ball looking inside the United States Patent and Trademark Office to easily determine an array of statistical information related to a particular Art Unit or even a specific Patent Examiner? Can you imagine the types of strategic consultations you could engage in with clients? Clients hate being surprised with additional fees and unexplained and/or unexpected delays. What if you could with a few clicks of your mouse find out all kinds of information about a Patent Examiner and/or Art Unit? The amount of cases requiring an RCE, the average number of office actions,...
3. The RCE Backlog: A Critical Patent Office ProblemThe backlog of unexamined patent applications was down over 15.1% in September 2012, compared with October 2010. At the same time, however, the number of unexamined RCE filings grew 95.56%, after peaking at 103.93% in August 2012. In the column above labeled “Totals,” I added the number of unexamined patent application with the number of unexamined RCE filings. When you consider all of these unexamined filings the progress of the USPTO is more modest. There is not a 15.1% dip, but rather a 8.05% dip in unexamined patent filings over this interval. It seems rather clear that the USPTO has...

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1. Bob Stoll Part 3 – SCOTUS, the Future CAFC, Inequitable ConductIn this final installment, Bob Stoll and I discuss the United States Supreme Court. We spend some time talking about the Supreme Court's recent patent eligible subject matter decisions. We also discuss the problem of bad patent applications contributing to bad law and slower, more inefficient patent prosecution. We also discuss inequitable conduct after Therasense and who might make a good addition to the Federal Circuit. Stoll says the name he keeps hearing is Todd Dickinson....
2. Patents, Politics and Life on K Street – My Interview with Bob StollI tried to get Stoll on the record while he was at the USPTO.  I don't think he dodged me, it just never worked out.  I travel a lot, he travels a lot and when it was convenient for one of us it was never convenient for the other.  In the time I have known Bob we have become friends.  I respect him enormously, his knowledge of all things patent is extraordinarily deep.  I always enjoy getting together with him, it is always a lively conversation.  So I am extremely happy to bring this on the record interview to you....
3. Exclusive Interview: Commissioner Focarino — Part 3In this final installment of my interview with Peggy Focarino, Commissioner for Patents, we discuss the examiner count system, production and Art Units and Patent Examiners that do not issue patents. What can the Office do about rogue Examiners and rogue Art Units? Does the Patent Office even understand this is a problem? Focarino was enormously candid, and it is clear to me that senior management at the USPTO know they have a problem and are working to create fixes. ...

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1. Chief Judge Rader Says KSR Didn’t Change Anything, I DisagreeUpon hearing Rader make such a bold statement the first thought that ran through my mind was — Really? Did he just say that? I have heard from others for some time that Rader has been heard to say these or similar things relating to obviousness, but I just discounted them as one would discount the output of a game of telephone. After something gets stated, shared and restated there is typically little of the same message remaining. That had to be why Rader was reported to have said such curious things about obviousness and the impact of KSR. But...
2. Another KSR RetrospectiveOn that fateful day some 27 months ago, April 30, 2007 to be precise, the United States Supreme Court decided that the well established and functional bright line rule for obviousness was too rigid.  No longer must there be a teaching, motiviation or suggestion to render an invention unpatentable for obviousness reasons.  No in this [...]...
3. US Patent Office Issues Update to KSR Examination GuidelinesThe United States Patent and Trademark Office has provided an update to its Examination Guidelines concerning the law of obviousness under 35 U.S.C. 103 in light of precedential decisions from the United States Court of Appeals for the Federal Circuit issued since the 2007 decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex Inc. The Updated Guidelines were published today in the Federal Register, and in response to the requests of many stakeholders the USPTO has included additional examples to help elucidate the ever-evolving law of obviousness. These guidelines are intended primarily to be used by...

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1. Prior Borat? Non-traditional Prior Art Rejections!Recently, I was working on a patent search requiring me to look in areas of patent art relating to male underclothing (a very popular area for patenting, as you may guess) when I came across this little number: US Patent Application 12/071,878, which is titled "Scrotal Support Garment." This application serves as a great example of rejection through non-patent literature. When you apply for a patent, the examiner can use any information available to the public to reject your application – not just patents. In this case, the examiner had an easy time finding a picture of Borat in the...
2. Making Progress with Difficult Patent ApplicationsSome patent applications are difficult to get agreement on. The examiner won’t allow and the applicant won’t abandon. The net result is that office actions and responses go back and forth with no apparent resolution in sight. We propose that progress with these difficult patent applications can be tracked by looking at two separate but interrelated metrics, “applicant effectiveness” and “examiner effectiveness”. These two metrics can then be used to diagnose and correct problems in patent prosecution and examination....
3. New PTO Initiative Gives More Opportunities to Amend After FinalAll and all this seems like a positive development. If you do provide a claim set that defines the invention from broad to narrow it seems extremely likely that at least some claims could be obtained in a case given that amendments can now be filed if they place the application in condition for allowance by adding one or more new limitations that require only a limited amount of further consideration or search. Assuming that the Patent Examiners do search the disclosure, like they are supposed to, and not just the initial claim set, allowable matter should be present and...

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1. Detroit, Michigan Announced as First Regional Patent OfficeCommerce Secretary Gary Locke announced that the first Regional Patent Office would be located in Detroit, Michigan and will open at some point during 2011, employing some 100 patent examiners with some additional support staff. Locke explained that as a part of the nationwide workforce initiative of the Obama Administration high paying jobs would be coming to the USPTO Detroit Satellite Office. Locke said that while 100 patent examiners is an appropriate level of staffing initially that number could expand over time if the Regional Patent Office model proves successful. Secretary Locke also explained that the Detroit Satellite Patent Office...
2. Peer To Patent Sequel: USPTO To Begin New Pilot ProgramThe initial Peer To Patent pilot program, which began in 2007, opened the patent examination process to public participation in the belief that such participation would accelerate the examination process and improve the quality of patents. Yesterday the United States Patent and Trademark Office announced a sequel to the initial pilot program and will begin a second Peer To Patent pilot program, again in coordination with New York Law School’s Center for Patent Innovations (CPI). This new Peer To Patent program will run for a one year term and will commence on October 25, 2010. This second Peer To Patent...
3. USPTO and AUTM Announce Joint Patent Examiners Training InitiativeThe United States Patent and Trademark Office (USPTO) and the Association of University Technology Managers (AUTM) announced on Friday, March 15, 2012, the launch of the USPTO/AUTM Patent Examiners Training Initiative, a joint program designed to improve the strength and quality of U.S. patents through specialized training between patent examiners, innovators and scientists....

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1. Confessions of the Borat Applying Patent ExaminerYes, it was I. The former Borat applying patent examiner turned law student. See Prior Borat: Non-traditional Prior Art Rejections! If nothing other than offering comic relief, the now infamous Borat patent rejection has hopefully illustrated at least one fundamental truth to the inventor and patent practitioner alike – don’t forget to do a thorough search of non-patent literature. I won’t bore you with citations from the MPEP. We all know what the Manual says. Instead I will attempt to provide some general insights into the examination process....
2. The PTO Paradox: A Gatekeeper Mired in the PastI believe it is time for the PTO to jump aboard the ship of the future and use document and data search techniques now being employed in the litigation and national security arenas. Many tools (software approaches) exist that multiply effort and get smarter with each go around. I believe these tools should have a place at the PTO. Search techniques that build on what others have done and that search not just publications, but file histories as well, would give examiners a leg up when trying to assess patentability and truly understand what references can and should be cited...
3. Making it Easier to Get a PatentContrary to popular belief, things are getting much better in business methods. Applications filed in 1999 had prosecution times of over 10 years (lower green arrow). These and subsequent applications jammed up the system leading to excessive delays to first office actions. Applications filed in 2004, for example, had delays to first office action of 6 years (middle red arrow). Sometime around 2010, however, things started to improve. A lot more patents started issuing and the delays to first office action dropped to around 2 years (upper red arrow). That’s not to say that it’s easy to get a patent...

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1. University Tech Licensing Has Substantial Impact on EconomyIn the case of product sales, 58 institutions (31 percent of the 186 respondents) reported that 2,821 of their licenses paid $662 million in running royalties based on $37 billion in product sales, implying an average royalty rate of 1.8 percent. In the case of startups, 66 institutions (35 percent of the 186 respondents) reported employment of 24,653 by 1,731 operational startups, an average of 14 employees per startup. Assuming all 3,927 startups still operational averaged 14 employees, total employment would have been 55,929....
2. USPTO Seeks Change Patent Examiner Performance StandardsManagement at the United States Patent and Trademark Office has been working with representatives of the patent examiners union, the Patent Office Professional Association (POPA), to better align the performance standards for patent examiners with the USPTO’s goals for increasing quality in patent examination and reducing the backlog of pending patent applications, Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos announced today. If adopted, the joint task force’s changes would be the first major revision to the patent examiners’ performance appraisal plan (PAP) since 1986. ...
3. Patent Hoteling Program Succeeding as a Business StrategyThe telework program affords employees the ability to work from home from 1 to 5 days a week, and the largest of these telework programs — the Patent Hoteling Program (PHP) — had 2,600 patent examiners participating at the end of fiscal year 2011. With so many patent examiners working from home does the "brain drain" affect the learning curve of new patent examiners who have fewer people around to help and mentor. The Inspector General's report does not address the issue of "brain drain," but does quite clearly demonstrate that those examiners that work from home are more productive...

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1. USPTO and AUTM Announce Joint Patent Examiners Training InitiativeThe United States Patent and Trademark Office (USPTO) and the Association of University Technology Managers (AUTM) announced on Friday, March 15, 2012, the launch of the USPTO/AUTM Patent Examiners Training Initiative, a joint program designed to improve the strength and quality of U.S. patents through specialized training between patent examiners, innovators and scientists....
2. PTO Announces U.S. Government-Wide IP Training DatabaseThe United States Patent and Trademark Office (USPTO), in cooperation with the Office of the Intellectual Property Enforcement Coordinator (IPEC), today announced the launch of a new online database where U.S. government agencies are now posting information about the intellectual property rights (IPR) training programs they conduct around the world....
3. USPTO and UKIPO Progress Report on Worksharing InitiativeThe thing that struck me most from these survey results was the superiority of USPTO searches. I'm sure you have heard the same criticisms and joking that I have. Many, particularly Europeans, love to criticize and even make fun of the searches done by the USPTO. If anything these survey results suggest that the USPTO does a better search than is done in the UKIPO. After all, under UKIPO practice, examiners only cite extra documents if they are more relevant than those already found by the UK search. So when they rely on US references that means they must have...

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