Last week the United States Patent and Trademark Office (USPTO) announced in the Federal Register that it would modify the After Final Consideration Pilot Program (AFCP) to create an After Final Consideration Pilot Program 2.0 (AFCP 2.0). The goal of AFCP 2.0 is much the same as it was when the USPTO initially introduced the precursor AFCP. According to the USPTO, the goal of AFCP 2.0 is to reduce pendency by reducing the number of RCEs and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application. Thus, this can and should be viewed as part of the USPTO effort to continue to try and address the RCE problem.

AFCP 2.0 began on May 19, 2013 and will run through September 30, 2013. The USPTO says that any request for participation in the program must be filed on or before September 30, 2013. Of course, as is always the case, the USPTO left open the possibility that the pilot would be extended beyond that date.

You may recall that the AFCP was initially created by the USPTO at the beginning of 2012. See New PTO Initiative Gives More Opportunity to Amend After Final. The purpose of the program was to attempt to move cases along without the need to file an Request for Continued Examination (RCE) when the case was very near to completion. Under AFCP the applicant could engage with the examiner beyond what is otherwise allowed under the rules if the examiner determined that the response filed could be fully considered within 3 hours for plant or utility application, or within 1 hour for design patent applications. See USPTO Memo to Examiners.

On May 1, 2013, we published an article titled Patent Attorney Asks Examiner “Are You Drunk?” The article was about an unfortunate and horribly inappropriate filing made by an attorney.

After providing the filing I explained that there are better ways to approach the situation, but I also looked into some publicly available statistics to see whether there was any explainable frustration that may have been experienced by this attorney. That part of the article looking at the statistics painted an inaccurate and unfair picture. I write today to set the record straight.

The examiner who was sent this inappropriate filing is a junior examiner — Examiner Valvis — who has been with the Patent Office only 8 months. In the article I suggested that there was reason for frustration. What I inartfully was trying to say was that at first glance there seemed to be a reason to be frustrated because in the database consulted there was no evidence of any patents being issued in 66 applications worked on. I then said: “But with only 66 applications total that might not be surprising.” It isn’t surprising because new examiners begin work on new cases and most cases are not allowed on a first office action. So someone who has only 66 applications was clearly a junior person and the pool simply too small to draw any conclusions one way or another.

UPDATED May 16, 2013 at 8:56pm

EDITOR’S NOTE: An earlier version of the article below contained inaccuracies. It was erroneously stated that SPE Len Tran had not allowed any applications since 2008. As a supervisor he oversaw the work of Junior Patent Examiners and was the decision maker on hundreds of patents since 2008.

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There is a story circulating the Internet over the last few days about an alleged filing with the USPTO. I initially decided to ignore this for several reasons. First, it is impossible for me to believe that a patent attorney actually filed this with the Patent Office, although I could see it being put together for internal use as a cathartic exercise. Second, alleged filing is dated April 24, 2013, but still does not show in Public PAIR. Third, the Art Unit listed in the heading of the alleged filing is Art Unit 4188, which does not coincide with the Art Unit according to the final rejection (i.e., the final rejection comes from Art Unit 3752). Thus, I have my suspicions about the authenticity, but on Monday CBS News published an article discussing this alleged filing under the title The letter to the Patent Office you have to read. So the matter is now out in the open.

Perhaps this really was filed, who knows. If it was filed we will eventually be able to find a copy of the filing on Public PAIR. In the meantime I’m going to continue to refer to this as an alleged filing. Notwithstanding, here the colorful comments from the Remarks section, which seem to be the only thing that makes up the filing.

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.

Reed and PatentCore have recently launched of Reed Tech Patent Advisor^TM information services, a family of on-line data intelligence tools for patent professionals.

Patent Advisor™ provides patent professionals the ability to make analytics-driven strategic decisions based on predictable patterns demonstrated by the more than the 7,500 U.S. patent examiners during patent prosecution.  Presently, Patent Advisor™ provides patent professionals with strategic insight based upon information gleaned from an analysis of more than 5 million patent applications, with more applications being added continually. If you are interested sign-up for a 2-day free trial to test drive Patent Advisor™ and see for yourself.

On July 19, 2012, I interviewed Bob Stoll, former Commissioner for Patents of the United States Patent and Trademark Office.  The interview took place in a conference room at Drinker Biddleon K Street in Washington, D.C.  After 29 years working for the USPTO and a total of 34 years working for the government, Stoll retired on December 31, 2011.  He then started his new, second career as a private citizen and all around patent specialist at Drinker Biddle in the firm’s Intellectual Property Group.

In part 1 of my interview with Stoll we discussed his adjusting to life in the private sector, the fact that he doesn’t enjoy the billable hour part of private practice (just like every other attorney I know) and we discussed politics a bit, as well as the U.S. economy and innovation policy.  Part 2 of my interview, which appears below, picks up where we left off discussing Presidential politics and the buzz that engulfs D.C. every 4 years.  We then move on to talk about how innovation drives the U.S. economy and I get his thoughts on why we haven’t seen a great new technology that has spawned an entirely new industry as we have coming out of so many recessions in the past. We then finish part 2 discussing changes to the patent examination process and how to streamline the examination process.

On Monday, April 30, 2007, the United States Supreme Court issued its final decision in the matter of KSR v. Teleflex, which overruled the Federal Circuit’s application of the so-called “teaching, suggestion, motivation” rule (or simply TSM) as it applies to determining whether an invention is obvious. This 5th Anniversary of the ruling provides an opportunity to revisit the decision and where we have come since. This will be a recurring theme this week on IPWatchdog.com as we look at the law of obviousness in the wake of this infamous decision.

At least for the last generation (and likely longer) no other Supreme Court case in the patent arena has been nearly as influential as the Court’s decision in KSR v. Teleflex. This is because obviousness is where the rubber meets the road for the patentability of inventions. It is not enough that the invention is different; it also must also be non-obvious. TSM sought to inject objectivity into the obviousness analysis, and did so rather successfully. There were from time to time patents granted on inventions that would make you scratch your head and wonder, but was that any reason to remove objectivity from the obviousness analysis? No, but that is what the Supreme Court did when they issued the KSR decision, taking many by surprise.

Yes, it was I. The former Borat applying patent examiner turned law student. See Prior Borat: Non-traditional Prior Art Rejections! I understand why this rejection has garnered such attention. The salacious image relied upon in the rejection looks almost out of place. But as a matter of prior art, such rejections are commonplace. Publications like the Borat image, referred to as non-patent literature, are relied upon merely to teach structure (i.e., compare the structure depicted in the published image to the claims). But rejections relying on NPL often require much greater leaps of logic.

For example, consider Sakraida v. AG Pro, Inc., 425 U.S. 273, 275 n.1. In this patent infringement suit, the Supreme Court, relying on the examiner’s application of an ancient tale from Greek mythology, held patent No. 3,223,070 invalid. The patent in question, entitled “Dairy Establishment,” taught a water flush system to remove cow manure from the floor of a dairy barn. The examiner applied a myth describing the fifth labor of Heracles, wherein a stream was re-routed to the floors of the Augean stables to clean up after immortal livestock. This is a clever rejection, relying on a Greek myth to describe a system that is old and known in the art that is well within the bounds of both the MPEP and the common law. Suddenly, using popular cultural references as teachings seems obvious.

On November 10, 2010, the United States Patent and Trademark Office  (USPTO) and the United Kingdom Intellectual Property Office (UKIPO) initiated a work sharing arrangement whereby each office would utilize the work product (i.e., search and examination results) of the other office.  By sharing work product and relying, at least in part, on the efforts of another office it was believed that the patent process could be expedited and the growing backlog of patent applications alleviated by not having to re-invent the wheel (so to speak).  Specifically, the program sought to increase the efficiency of the patent application process and improve quality in the examination process.

In order to assess the success of the program the USPTO and UKIPO collaboratively developed an examiner survey designed to empirical data to be used for assessing the impact of work sharing on both efficiency and quality.  Examiners from both the USPTO and UKIPO were asked to complete the survey, and the preliminary report that presents the results from these surveys was released earlier today.

Jagshemash!

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.”  The primary illustration is shown to the left.

Look familiar? Yes, with the exception of adjustable straps, this is the Borat Swimsuit, the swimwear made famous by comedian Sasha Baron Cohen, a.k.a., Borat in the 2006 film Borat: Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan. If you remember the movie (and how could you forget?), Borat wore this swimsuit in one very short scene at the top of the film. That short scene set the tone for the craziness that was Borat’s world.

Program aims to foster relationships between patent examiners and innovators/scientists

Washington – The 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.

“This announcement represents an important step in partnering with the petri dish of creativity and research: the American university,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “We’re working hard to cultivate the work done there and get it to the world through the power of the U.S. patent.”

The U.S. Patent and Trademark Office is on the cutting edge of telework programs within the United States federal government and according to the United States Inspector General the USPTO telework program is a great success.  See The Patent Hoteling Program is Succeeding as a Business Strategy.  The 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.  According to the Patents Dashboard, at the end of fiscal year 2011 there were 6,885 patent examiners working for the USPTO, which means that 39% of patent examiners were enrolled in the PHP and working from home.

The PHP is voluntary for eligible, participating patent examiners. To be eligible to participate in PHP, individuals must achieve a satisfactory rating, which corresponds to a rating of 3 or higher out of 5.  I have long wondered whether the PHP is a good program myself.  Certainly there is a lot to be gained by allowing patent examiners to work from home, but there is potentially a lot that is lost as well.  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 than examiners who report to work on campus at the USPTO.

It’s tough to get a patent these days. All too often applicants and patent examiners lock horns and get stuck in an endless loop of rejection/response/rejection/response, etc. The applicant cannot convince the examiner to allow the patent and the examiner cannot convince the applicant to abandon the patent. It would be a lot easier to get a patent if there was a way to avoid this.

I have found in my own practice that each technology class at the USPTO is different. Some are easy. Some are hard. I have also found that this can change. Some of the easy ones suddenly get hard and some of the hard ones suddenly get, well maybe not “easy”, but at least better. You can see if a technology class is getting easier or harder by plotting the patent filing dates in that class versus patent issue dates. Here is an example for a “normal class”, semiconductor packaging, class/subclass 438/114.

You may have heard of them, but as a rule I think it is safe to say that most patent attorneys and patent agents have never seen one, at least not in certain technology areas. They are called “first action allowances” and this happens when you file a patent application and the patent examiner does not reject any claims and instead finds that your submission is in order and allowable without amendment.

In some technical areas, such as class 705 – business method patents for example, first action allowances likely seem like the patent equivalent of a unicorn. Perhaps an even better analogy would be to Bigfoot! There are rumors of sightings but no hard proof to know that they exist for certain, or at least not proof that would stand up to true scientific scrutiny.

As a general rule patent examiners will always find something to reject, and, in fact, there is growing evidence to support the anecdotal stories about certain Art Units and Supervisory Patent Examiners simply refusing to ever issue a patent unless the applicant appeals.  See Denial of Due Process. Obviously, such a refusal to award patents is troubling and evidence of an enormous problem facing the Patent Office.  The data capable of being obtained by PatentCore is voluminous and eye-opening.  I have no doubt that it will eventually lead to significant changes and the eradication of patent examiners who refuse to issue patents.

Much has been said about the fact that the USPTO has struggled for too many years yet fails to keep up with filings.  In a message dated January 25, 2012, Professor Harold Wegner pointed out that, currently, 46% of “new” applications are not new at all but are actually RCE’s.  USPTO “count reform,” intended to encourage greater efficiency in the examination process, had only reduced the rate of growth of RCE filings to 10.7 percent.  At least one response to Prof. Wegner, shared in another posting on January 25, stated the view that doing away with RCE practice would serve only to generate a staggering number of appeals and shift the backlog to the Board of Appeals, make the application process inordinately costly, and discourage inventors from ever applying for a patent at all.  As things stand, there is not much doubt about such a result.

Considering the amount of hand-wringing that has occurred over the matter, and the disappointing results thus far, it appears that, as things stand, there is little hope for the PTO to get is work done in any timely manner except by hiring a veritable army of examiners, legions of administrative patent judges, together with innumerable support staff.   It is not difficult to foresee how a budget request for such an approach would be received in Congress.

Art 4Last week I spoke at the 6th Annual Patent Law Institute hosted by the Practising Law Institute.  The topic of my presentation was largely a “dealer’s choice” if you will, with the segment being billed as PLI Authors: Hot Topics in Patent Prosecution. I spoke at the New York City location and Jeffrey Sheldon, author of How to Write a Patent Application.  With me being able to pick whatever prosecution topic I wanted, I decided to focus on Track 1 as a strategy to deal with Art Units where patents seem to go to die, which allowed me to discuss what I was finding from PatentCore relative to the Art Units that handle business method patents.  See Business Methods by the Numbers and Appealed Patent Allowances.

After my presentation, as you might expect, I was approached by a number of patent attorneys.  Story after story it was the same thing I have heard from so many others — depressing tales of not being able to get a patent.  One particularly egregious thing I heard was from a patent attorney who told me about a conversation he recently had with a SPE from one of the business method art units.  I don’t know which Art Unit, and frankly I didn’t ask, although it is probably easy enough to narrow down the Art Unit.  This patent attorney told me that the SPE said: “we just don’t issue patents unless the Board orders us to.”  If that is in fact what was said and is in fact what is happening then there is a systematic denial of due process at the United States Patent and Trademark Office, and that is wholly unacceptable.