Posts Tagged: "patent examiners"

It is well known that hindsight reconstruction is an insidious error that infects patent prosecution. The Federal Circuit has noted that it is a difficult task to avoid “subconscious reliance on hindsight” and tools are available to “inoculate the obviousness analysis against hindsight”. However, it is well known that practitioners could benefit in countering the pernicious problem of subconscious hindsight directed analysis with additional tools. This article is intended to provide an additional tool outlining a new analytical approach to detecting hindsight: 1) identification of a proxy problem upon which an “obvious” advantage is predicated, and 2) showing that either a) the proxy problem is secondary to the problem solved by the inventor and would have been insufficient to drive advancement of the art, and that the examiner has failed to show that a person of ordinary skill in the art (POSITA) would have regarded the proxy problem as sufficiently significant so as to require solution, or b) a showing that the proxy problem posed to POSITA presupposes the problem and its solution as solved by the inventor and is derivative. Once it is shown that the proxy problem is subsidiary or presupposes the problem solved by the inventor it becomes a less difficult task to show that the invention was not considered as a whole or that the problem was improperly phrased.

Chinese patents and patent applications are citable as prior art in most Western countries if they meet the usual criteria regarding publication dates of the cited patent and filing or priority dates of the examined patent. They always have been. However, recent developments have made them more problematic for Western country applicants, especially for independent inventors and small businesses… While in the past an inventor may have decided that it was not worth getting a patent, and many inventions have been forgotten in this manner, there is a large number of people in China who are now encouraged to file patents applications and utility model applications even for the simplest of invention. What we can do as patent agents and attorneys, is to start searching for Chinese documents when doing prior art searches. This may result in bad news for inventors who receive negative patentability reports, but at least they will not spend a lot of money only to have their patent application rejected later.

On September 19, 2016, a pro-se inventor filed an Office Action Response that will go down in the annals of Patent Office history right up there with the Are You Drunk Examiner? response filed several years ago. Whatever one might think of patent examination quality, there is absolutely no call for using foul language to berate examiners in an Office Action Response. It is one thing to point out that it seems clear that an examiner has not read what the applicant has submitted, but it is quite another to call the examiner and the examiner’s supervisor a… There are patent examiners that can and do inspire this level of venomous hatred. Whatever the wrong perpetrated by the examiner ceases to matter, however, when a response like this is filed.

On August 31, 2016, the Office of the Inspector General (OIG) of the U.S. Department of Commerce (DOC) released a report titled Investigative Report on Analysis of Patent Examiners’ Time and Attendance, (the Report). The Report lacks a sound statistical basis for its conclusions and recommendations. It should be withdrawn and its errors corrected before further dissemination. Otherwise, the OIG’s credibility will be irreparably damaged and it will deserve not to be taken seriously by the public, the U.S. Patent & Trademark Office (PTO), or other DOC operating units.

Prepared statements released in advance of the hearing talked tough, but that was pretty much it. Insofar as getting to the root of the problems identified in the IG report the hearing turned out to be a big, fat nothing burger. I guess when the fraud is only 2% of the hours worked that is seen as a moral victory and a sign of good government. Perhaps 2% fraud in government is the best we can expect, but if you dig even one fraction of a level deeper within the IG report you will notice that almost 45% of those hours characterized as fraudulent were claimed by fewer than 5% of patent examiners. How is it possible that less than 5% of patent examiners accounted for nearly half of the fraudulent hours identified by the Inspector General? If there are valid reasons that the many hard working, conscientious examiners might be working and not logged in then why are so many of these questionable hours disproportionately being claimed by only a small number of patent examiners?

“My team and I do not tolerate time and attendance abuse,” Lee told the subcommittee. While she did note that the USPTO had taken disciplinary actions against examiners that have abused time and attendance reports, such actions ranging from counseling to expulsion and repayment for hours not worked, she added that there was evidence that instances of time and attendance abuse were not widespread. She cited a report on the USPTO’s telework program issued by the National Academy of Public Administration (NAPA) in July 2015. The report found that “It would appear to be unlikely that [time and attendance] abuse is widespread or unique to teleworkers, and it does not appear to reflect the actions of the workforce as a whole.” Additionally, the report indicated that the agency’s telework program saved the agency $7 million each year on average by allowing examiners to continue working in spite of government shutdowns caused by weather or other reasons.

More importantly, the OIG’s report misses the point. Nearly everyone agrees that the quality of patents being issued is a problem, but the OIG didn’t consider patent quality at all. The OIG’s proposed solution of forcing examiners to produce more quickly is hardly a recipe for quality, particularly when examiners report that they don’t currently have enough time to do a thorough job. In contrast, the Government Accountability Office recently issued two reports on improving patent quality. The GAO looked at internal procedures and surveyed examiners in order to identify some of the real causes of poor patent quality. The GAO had a number of important recommendations for improving patent quality; the distraction of this “fraud” may mean that we waste a real opportunity to make some positive changes.

The investigative report, prompted by interest caused by the infamous “Examiner A,” who falsely claimed he worked 730 hours in fiscal year 2014, concluded that for the 15-month period of August 10, 2014 through November 28, 2015, patent examiners submitted 288,479 hours that could not be supported or verified as being worked. These unsupported hours equated to $18.3 million in over payments. According to the Inspector General, a conservative approach to the evidence was taken to ensure that the amount of unsupported hours did not unfairly assume any particular examiner was not working when they claimed to be working. However, the report explains that a less conservative methodology would “have increased the total unsupported hours by an additional 327,000 unsupported hours,” making the total of unsupported hours 615,479 unsupported hours, which would then correspond to over $39 million in over payments to patent examiners.

It is the personal relationships and dynamics between those junior and senior examiners where the final, hidden gate to patentability stands. Between them, the junior examiners perform the heavy lifting of searching the prior art and preparing the official actions, and the more senior examiners carry the burden of signing those official actions and allowing applications to grant… To be effective, patent practitioners can do more than narrowly obsess over a single novel and non-obvious element in the claims… Patent practitioners can provide junior examiners with an “elevator pitch” for allowability. They can arm junior examiners with technically clear and concise arguments that are fast to recount and express.

While any system should always aspire to provide better quality, the patent system included, patent quality is a two way street that requires the Office to look in the mirror and take care of its own internal business. If the Patent Office is truly interested in quality they should take steps to address low quality patent examination, which is unfortunately too common… Having a complete record means that the Office needs to record what is being done and by who, period. No secrets. No more decisions made behind closed doors by unknown actors.

Somehow a culture of Examiner v. Applicant has evolved. There doesn’t seem to be much in examiner training to pit them against external stakeholders. No evidence there of USPTO-endorsed nefarious agenda! Examiner training directives regarding external stakeholder interaction are in-line with what the stakeholder should reasonably expect. Still, it seems every patent practitioner has a story of examiner absurdity to tell.

The unadvertised feature is that the Pre-Appeal Conference board is assembled by an administrative assistant in the technology center, but the P3 board is assembled by the SPE. This is a critical difference. With the P3 program, the Office is trying to address an internally perceived problem that they believe they have with the Pre-Appeal Conference, which is the technical knowledge of the third member of the board. The third member of the Pre-Appeal Conference is the first available examiner from any technology center and with any type of technical background. This person is essentially selected at random, and often has no technical competence in the area. With the P3 program, the third person is picked by the SPE. This gives the SPE the ability to stack the deck in their favor, intentionally or not.

Examiners are not supposed to think about the nebulous areas of 101, 102, or 103, nor are they to interpret case law from judicial opinions. Instead, the USPTO has already determined how they intend to interpret these sources, and has distilled these decisions into memos for their examiners to follow. To the examiners, an attorney putting forth arguments on such grounds is arguing issues that have already been settled. There are appropriate periods in the pursuit of patent protect for attorneys to argue the grey areas of law, but the exchange with the examiner is not the time to do that advocacy to any great extent. Arguing those grey areas in prosecution wastes clients’ resources and everyone’s time.

Due to a bizarre jurisdictional “feature,” the Board does not actually get jurisdiction over a case until either a Reply Brief has been filed or the time to file a Reply Brief has run. See 37 CFR 41.35(a). What this means is the patent examiner, in order to frustrate the applicant’s ability to have the Board hear a case, can simply refuse to file an Examiner’s Answer and instead reopen prosecution. This happens all too frequently in some Art Units.

Delay, frustrate, harass and ignore patent applicants. Issue frivolous rejections if necessary, but reject at all costs. If the Board issues a complete reversal just reopen prosecution. Eventually the patent applicant will get the idea and abandon the application. TC 3600 seems to be fighting a very successful and coordinated war of attrition against applicants.