Patent Academy Closing, USPTO Budget Crisis Deepening?

By Gene Quinn
March 23, 2009

On March 2, 2009, the Practising Law Institute kicked off the Third Annual Patent Law Institute at its New York City headquarters.  The West Coast version of this live program started today and will conclude tomorrow, live at the California offices of PLI in downtown San Francisco, CA.  Right about now the participants are probably seeing a video of Robert Clarke, the Director of the Office of Legal Administration at the United States Patent & Trademark Office.  Clarke was to have attended live both the New York presentation and the California presentation of the Patent Law Institute, but because travel and appearances are being cut back PTO Officials such as Clarke are not able to participate in many, if any, remote events.  I encountered a similar situation while I was in Charlotte, North Carolina two weeks ago taping a 10-part mini-series sponsored by the United Inventors Association.  A PTO Official was to have participated in the two segments I taped on basic patent law and on avoiding scams, but due to budget problems no PTO representative was able to attend the taping, which took place at the Enventsys studio, where Everyday Edisons is shot and Inventor’s Digest calls home.

In any event, during his presentation on March 2, 2009, Clarke explained that the Patent Office had budgeted for a 5% increase in applications during 2009, and to date the Patent Office has seen a decline in applications instead.  I have heard the decline in applications is about 5%, but Acting PTO Director John Doll has said it is 2% year over year.  Whether it is 2% or 5%, the reality is that the Patent Office has budgetary problems moving forward in 2009, although Clarke says that the Office feels like it will be fine for this fiscal year.  But what is in store for FY2010 and beyond?  The Patent Office is worried, and with good reason.  So far this year the Patent Office is allowing applications at a rate of 42%, which is dramatically down from the pre-Dudas era.  That means with fewer allowances the Patent Office is missing out on issue fees and publications fees because at the direction of Office management examiners are rejecting far more than allowing these days.  To put these numbers into perspective, for a small entity the issue fee is currently $755, and for those who do not qualify for small entity status the issue fee is currently $1,510.  Whether you are a small entity or not, the publication fee is $300, so for every application the Office rejects they are losing either $1,055 or $1,810 in revenue.  Admittedly, not all applications should issue, but historically the allowance rate bounced between roughly 60% and 70%, except for the last four or five years (see chart below).  Any way you slice it the new patent philosophy that has been described by some examiners as “reject, reject, reject” is finally starting to catch up with the Patent Office and will devastate the Office budget moving forward.

This are going to look very bleak and only accelerate in a downward spiral for the Patent Office in coming years.  This is because, depsite popular misconception, patents do not last 20 years.  The general rule is that a patent will fall into the public domain 20 years after its original filing date, but the patent owner must also make so-called maintenance fee payments in order to keep the patent current and out of the public domain.  These maintenance fees are due at 3.5, 7.5 and 11.5 years after issuance, and the fees go up over time.  Presently, for small entities the fees are $490 for the first payment, $1,240 for the second payment and $2,055 for the final payment.  If you do not qualify as a small entity the fees are $980 for the first payment, $2,480 for the second payment and $4,110 for the final payment.  Given that most patent owners will not know whether it is economically wise to pay to keep the patent current at only 3.5 years after issue, most patents have the first payment made.  When patents really start to slide into the public domain is 7.5 years after issuance, and then even more so 11.5 years after issuance.  If you are not not making money on the patent it just doesn’t make sense to keep paying escalating fees.  With 20-25% fewer patents being issued on a yearly basis now over just a few years ago it does not take a rocket scientist to figure out what this is going to do to the Patent Office budget.  With about 70% of USPTO revenues coming from maintenance fee payments look for the Patent Office budget to spiral out of control down, which will only make the Office more desperate to require applicants to do more and more and receive less and less services. 

The Patent Office has made this bed and now they have to deal with the mess.  Rather than working to ensure that ridiculous patents are not issued efforts were made to cut patent allowance across the board.  Still, at the end of FY2008 there were over 1.2 million application pending and hopelessly trending upward year after year.  With fewer and fewer resources it seems that while the Office might be able to stay ahead of the game in FY2009, FY2010 and beyond are not looking good at all.  Add this to the recent Federal Circuit decision in Tafas v. USPTO that the claims and continuations rules were procedural (which strikes me as pure nonsense) and Judge Prost saying the USPTO can require applicants to submit additional information in the form of an Examination Support Document (ESD), which basically requires the applicant to examine their own patent and conclusively prove patentability, and it seems likely that the USPTO will be tempted to require all applicants to create and submit onerous ESDs, thereby making it far more expensive to get a meaningful patent moving forward.

Add to all of this the recent revelation that the Patent Academy is closing by the end of 2009.  The Patent Academy is the training center at the US Patent Office charged with training new patent examiners.  My source within the PTO did not elaborate as to why the Patent Academy would be closing, but with a hiring freeze in place and substantial worries about the budget moving forward one could conclude that hiring new examiners is not in the foreseeable future.  This would be an enormous blow to the Patent Office if it is true.  I have never been a fan of the Patent Academy because I don’t know what you could do training wise that would take 8 full months, but if there are no new examiners getting hired, and there is a constant and steady stream of examiners leaving and/or retiring, how will the Patent Office be able to keep up? 

We are at a pivotal time in the history of the Patent Office, and I have to wonder whether the senior management that has gotten us into this mess is capable of making course corrections to get us back on track.  While many will not see the appointment of a new PTO Director as particularly important, this could be the most important appointment President Obama will make.  The backlog at the Patent Office is starting to kill innovation.  During a recession is the time that new industries based on new and innovative technologies start.  Without meaningful patent rights being granted in a technologically relevant time frame there will be no investment, and that would prevent a significant engine that could otherwise create new jobs.  So if President Obama really wants to create new jobs he needs to fix the Patent Office and he must do it right away.

About the Author

  Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)

B.S. in Electrical Engineering, Rutgers University
J.D., Franklin Pierce Law Center
L.L.M. in Intellectual Property, Franklin Pierce Law Center

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Gene is a US Patent Attorney, Law Professor and the founder of He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. 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.

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Discuss this

There are currently 27 Comments comments.

  1. patent leather March 23, 2009 2:26 pm

    There is an easy solution to this, and I’ve said this before on this and other blogs — the “second set of eyes” should also be configured to check for bad rejections as well (currently, only upon a potential allowance does it goes before them, putting fear into the examiners). This would at least make the quality review more fair and remove the amount of bogus rejections. Currently, the SPE (in theory) is supposed to check for bad rejections, but they have so much to do these days that bad rejections go unchecked (and are even encouraged, the SPEs also don’t want to get in trouble with Quality Assurance either).

    If I were in control at the USPTO, I would dismantle the “second set of eyes” completely and make them all primary examiners to help work on the backlog (instead of increasing it). It”s only caused misery among examiners, attorneys, patent applicants, and now even the USPTO.

  2. Alan McDonald March 23, 2009 2:48 pm

    How much of the reduced filings for 2009 and reduced allowance rate is in the business method/software arena?

    These seemed to be the largest increases over the past several years and with their future in doubt no surprise that filings/allowances are down.

    To me, this is a good thing, State Street was a mistake that needed correcting.

  3. Breadcrumbs March 23, 2009 7:08 pm

    Step 1) The Office can make rules including adding the requirement of an indepth search and analysis of why the application surpasses the resultant art found in the MPEP minimum level required search in regards to novelty and obviousness.

    Step 2) The Office has a hiring freeze and closes down the examiner training program.

    Step 3) Is it obvious what direction we are heading? All we need is to find out that the examiner union meets with USPTO top brass behind closed doors.

    The breadlines are about to get a little bit longer.

  4. GCG March 30, 2009 8:23 am

    Does anyone know when the hiring freeze may end or if hiring is done on exceptional basis?

  5. rrroseen April 1, 2009 6:44 pm

    “We are at a pivotal time in the history of the Patent Office, and I have to wonder whether the senior management that has gotten us into this mess is capable of making course corrections to get us back on track. While many will not see the appointment of a new PTO Director as particularly important, this could be the most important appointment President Obama will make. The backlog at the Patent Office is starting to kill innovation. During a recession is the time that new industries based on new and innovative technologies start. Without meaningful patent rights being granted in a technologically relevant time frame there will be no investment, and that would prevent a significant engine that could otherwise create new jobs. So if President Obama really wants to create new jobs he needs to fix the Patent Office and he must do it right away.”

    I do not think there is any better way of saying the above and the above should be put in front of Obama.

  6. Wannabepatentexaminer April 7, 2009 7:27 pm

    How in the world can the PTO stop the influx of new examiners into the system and close the Patent Academy? Patent examiners leave the PTO because of the notorious incompetence of SPEs (Supervisory Patent Examiners), which are well-known throught the patent law community. Many art units currently have a waiting period of 3-5 years before applications are even being looked at. I have 8 years of experience as a searcher, application writer and patent agent for a patent law firm in Washington, DC and I know the PTO has a good salary, generous overtime pay, great benefits and will even pay for law school at night after 2 years. I would love to work for them and it is frustrating to read about their continued incompetence and a career opportunity I am missing out on because of it.

  7. Time to think April 10, 2009 4:00 pm

    Multiple articles are throwing around these allowance rate graphs, but nobody questions them. There’s stupid suggestions that the law should just be brushed aside and allow everything for the sake of revenue, and many more short-sighted complaints.

    Here’s a real question: what does the allowance rate represent? Does it consider that CPA and RCE practices didn’t exist before the drop in allowance rates? CPAs, and then RCEs, are continuations of the same invention – but internally everytime one is filed, it is considered an “abandonment” and then the internal counting system starts over and pretends that the RCE is a new application. But it isn’t. It’s the same invention – the same subject matter – the same application.

    Thus, are RCEs skewing the allowance rate data? In many cases, after one or two RCEs, the invention ends up being allowed. In reality, that’s 100% allowance rate (1 invention filed : 1 patent granted). However, in the USPTO’s statistics, it only represents a 50% or 33.3% allowance rate due to the internal “abandonment” and restart procedures of the application.

    I want to see a correllation before we start screaming that the Supreme Court is fundamentally flawed in their interpretation of patent law. That’s a serious allegation.

  8. Gene Quinn April 10, 2009 4:30 pm

    Time to think-

    Are you an examiner?

    How could you think that there is a 100% allowance rate if an application requires 2 RCEs? Everyone in the industry knows that RCEs are forced by examiners in most cases because they want an additional, quick and easy quota mark. The Office has created its own problem by forcing applicants to file RCEs and Continuations and then crying that they have to review applications multiple times.

    The law is clear, a patent is to be presumed and unless an examiner can articulate a reason to deny it then it MUST be issued. Examiners who, for whatever reason, choose not to issue patents are violating the law in many instances.

    In terms of the Supremes, just listen to Justice Scalia, who admitted that patents and patent law is gobbledygook from the bench. That is an admission of lack of understanding of the law and the consequences of their decisions. Also, only a court that knows nothing about patent law would require patent examiners, who are not legally trained, to makde obviousness determinations without objective guidance and ask them to figure out what is “common sense.” We don’t have to scream that SCOTUS doesn’t understand patent law, they do a fine job proving it case after case themselves.


  9. Time to think April 14, 2009 8:58 am

    I cannot answer that. However, here are some other points you may wish to consider:

    Actually, the RCE factor makes a huge difference. The USPTO publishes a graph just like the one above, but also adds a second curve that corrects for the internal pseudo-disposals due to CPA and RCE processing practices.

    The real, true allowance rate – that is to say, the number of inventions filed resulting in a number of issued patents – is 62% for 2008 according to the USPTO. It still follows the declining trend, yes, but the allowance rate is not nearly as bad as assumed.

    Here are some other factors that have not been addressed, that are fairly recent changes, both inside and outside IP:

    ~the ability to patent business methods (I do not know what their allowance rate is, but the legal basis for such patents has just occurred in this decade) – this controversial, and booming, portion of applications might have an effect, in combination with other issues.

    ~ the economy – some businesses have given up on patent applications, even those having allowable subject matter indicated, whether due to financial constraints, or claims that are too narrow to justify the expense, etc.

    I recognize the ebb and flow of patent law interpretation. Although most examiners followed the tenets outlined in KSR ever since Graham v. Deere, the TSM-based obviousness analysis enforced by the subsequent Federal Circuit decisions were showing their effect during the boom of allowance rates in the late 90s through the mid 2000s.

    Removing the RCE disposals, we actually see an allowance rate of 79% in 1999, 2000 and 2001, while the allowance rate was over 75% from 1998 through 2004. That’s higher than the “historical” 60% to 70% mentioned in the article.

    Now with more complete and accurate information, may I suggest that this is most likely a natural, cyclic shakeout from inflated allowance rates that people have become accustomed to, now compounded by the economic crisis?

  10. Time to think April 14, 2009 9:05 am

    Furthermore, RCEs can only be “forced” if the final rejections are valid. I cannot account for the average quality of final rejections, nor can I account for the average ability of filers to recognize and successfully refute flawed final rejections.

  11. Time to think April 14, 2009 9:09 am

    Also, if the public wants true, 100% judicial decisions, then filers and the gov’t must be willing to pay for every examiner, all 6000+ of them, to go through law school, pass the bar, and go through the legal training to become judges themselves. It’s not practical. Would it be better? Maybe. But then again, that’s what the BPAI is for.

    Maybe flawed final rejections need to be appealed, rather than rolling over on command and going for the RCE while times are good, and now screaming about it since cash is tight.

  12. Time to think April 14, 2009 9:23 am

    The BPAI is presided by judges knowledgeable in patent law. Also, there are free pre-appeal conference requests to have a final rejection reviewed before pursuing the full-fledged appeal process. Take advantage of those and spread the word. Abundant opportunities exist to overcome a flawed final rejection.

  13. Time to think April 14, 2009 10:09 am

    In short, my point is this: taking one statistical plot, without question, and screaming foul, is silly.

    More points to consider:

    The allowance rate is a ratio, not a total number. There are more applications being processed per year. Therefore, a lower allowance rate does not necessarily mean that there are less total allowances. So, will the net fee revenue from maintenance fees actually drop? We don’t know, and the article does not provide an answer – it only assumes that revenue will drop. With the current economic crisis, we can expect it to drop, but the underlying numbers that have been ignored may not provide as dire a picture as is presented.

    Furthermore, simply brushing aside the law (35 USC 103, in particular) for the sake of revenue devalues the patent. How can one expect a valid, enforceable patent if the law is simply thrown to the wind? This is getting ridiculous.

    Finally, one must consider the variables involved in the current practice. There are worthless applications; there are time constraints and there are quality constraints. There are variations in how the law is interpreted; there are variations in prosecution procedures; there are variations among employees and their training; there are variations among attorneys and agents and their respective training; there are variations among the inventors and their respective understanding of patent law; there are economic variations. All of these things contribute to an allowance rate that may vary significantly with time.

  14. Gene Quinn April 14, 2009 10:42 am

    Time to think-

    You can think that the graph is silly, but it comes from the USPTO courtesy of Rob Clarke, the Director of the Office of Legal Administration. Everyone knows (except perhaps for you) that the low allowance rate is a problem. You seem to be of the belief that there should be a cap on the number of patents issued, which is pure nonesense. With more applications there should be more allowances. There should be no artificial cap on the number of patents. The plung in the allowance rate was intended to stop silly patents from issuing, but has not succeeded. There are crap patents issued every week.

    I am all for enforcement of 103 standards. I would just like to know what they are. Thanks to the Supremes it is left to the common sense of the examiner. There is no objective test for obviousness. That taken with the pitiful allowance rate, the fact that some examiners have not issued a patent in years and ridiculous rules and laws that will only make matter worse will continue to push the US patent system into irrelevance.

    You are right about one thing, there are many factors that contribute to a varying allowance rate. If you open your mind though you will realize that a historical allowance rate that bounces between 60% to 70% has to mean something when compared to the 42% allowance rate today. The Office management is pushing innovation into abandoned files and forcing people to choose not to apply for patents at all. The USPTO is destroying the economy far more than any political spending could.


  15. Gene Quinn April 14, 2009 10:43 am

    Time to think-

    Interesting that you bring up the BPAI. In the coming weeks I should have quite a story that will blow the socks off your argument.


  16. Gene Quinn April 14, 2009 10:46 am


    I see. Since many examines cannot or will not do their jobs, are more concerned about their quota and promotions, then we should advise clients to spend $10,000 or more on an appeal that will take years rather than spending $400 on an RCE in hopes of getting a real action by the examiner after they have received enough quota points? Come on! You can’t be serious.


  17. Time to think April 14, 2009 10:50 am

    Another fundamentally flawed assumption made in the above article is that all non-allowed applications were abandoned due to denial of patentability. This may be true for a majority, but not all.

    There is no data required by the USPTO or any group, public or private, that tallies the reasons why every one of the 38% of applications went abandoned in 2008 (opposite of 62% allowance rate). Some are abandoned because the company simply ran out of money, or a shift in strategy. Remember, depending upon the technology, applications sit anywhere from 1 year to 5 or more before the application is on the examiner’s desk. Much can change in a business, or even an entire sector, over that time. Maybe something better comes out and so the companies seek patent protection on that, and therefore lets the old application go. Some technologies move very quickly.

    My point is, there are many viable, and significant, reasons for an application to never reach the status of an issued patent. Denial of patentability can only be reasonably assumed as the majority of those reasons (greater than half).

  18. Time to think April 14, 2009 11:03 am

    Wow. Such blanket statements representing so few examiners. I said, there is a free pre-appeal conference request procedure that was implemented a few years ago in order to address the very issue you brought up. Are you not aware of it? Perhaps you need to call USPTO Customer Service and inquire.

    I said, that’s what the BPAI is for. If you insist upon denying their validity as well, then no one can help. There is no rational solution, if you insist on that path.

    At this point you are frothing at the mouth rabid, and have removed yourself from rational thought. I’ve said my piece. The arguments and facts I’ve presented are valid and real. At this point, you are choosing to ignore them. And you teach courses on this subject matter? For shame.

  19. Time to think April 14, 2009 11:37 am

    My true allowance data comes from the Director himself.

  20. Gene Quinn April 14, 2009 12:27 pm


    You said: “I said, that’s what the BPAI is for. If you insist upon denying their validity as well, then no one can help. There is no rational solution, if you insist on that path.”

    I said nothing to disparage the BPAI. I have a lot of respect for what they do and the role they play. If you would read what I write throughout my site you would know that, but I am sure it is just easier for you to put words in my mouth.

    That is what the BPAI is for, but the fact is that many examiners force applicants into abandoning because they cannot afford an appeal, or by the time the appeal is complete the technology will no longer have any relevance, so why protect? The USPTO has created a mess. In many technologies it is simply impossible to get a patent in a technologically relevant time frame, and you know that.


  21. Gene Quinn April 14, 2009 12:35 pm


    You said: “My true allowance data comes from the Director himself.”

    I am happy for you that you have a direct link to the Director himself. That is impressive indeed. The Director is the one responsible for this mess, and as far as I can tell he has no credibility as far as anyone in the patent industry is concerned. To read my views on who is to blame you might find this article interesting:



  22. Time to think April 14, 2009 1:38 pm

    I don’t understand why you ignore the fact that RCE filings skew the raw data presented in the graph you cited from the USPTO. I’m telling you for a fact, in the absolute, the true allowance rate – the ratio of issued patents over the number of processed applications, not the false-new applications that RCE internal processing creates, is 62% for 2008. It’s a simple fact. Stated another way, the actual percentage of allowable subject matter examined by the USPTO is 62% for 2008.

    RCE filings are not true new applications because they contain the same subject matter, the same invention, as their “parent” applications, as I explained in a previous post. Therefore, including those intermediate pseudo-disposals does not truly represent the percentage of allowable subject matter, nor the percentage of issued patents, compared to applications filed. The graph you cited above is only raw data that is, inadvertently, misleading. 62% of applications examined in 2008 resulted in patents, not 42%. That is simple, undeniable fact.

    Before you consider me bamboozled, you need to understand how the internal processing systems handle RCEs. Then you would understand why the allowance data in the above chart is inaccurate. All examiners know it. They see it on every biweekly production report. The abandonments from an RCE filing tallies in the abandonment column, and the percent allowed of disposals for the examiner drops accordingly. However, the subject matter was not, in reality, abandoned upon filing the RCE. The same subject matter, the same invention, is still alive and pending. Nothing has changed, only internal counting, which results in the flawed data you see in the chart.

    I also don’t understand your comment: “Interesting that you bring up the BPAI. In the coming weeks I should have quite a story that will blow the socks off your argument.” That sounds like you’re undermining their validity to me, or at the very least, insisting on the case that their portion of the system is just as flawed as the examiner portion. Again, if that’s your position, then there is no future. You’re tantamount to undermining the entire system designed to examine patent applications.

    Now what? Start from scratch? Re-write 35 USC? It takes time, extensive training and expertise to determine obviousness. Until recently, the patent office did not provide sufficient training, there hasn’t been enough time to do the job that the public seems to expect since the production system was implemented, and expertise is as much years of experience as it is training.

    Obviousness is objectively based upon evidence of record, but there is no concrete plug-and-chug, five minute formula. It’s a four-part test. As a result, there is inherent subjectivity. If there wasn’t, then interpretation would have been consistent throughout, and Graham v. Deere, KSR, etc., wouldn’t have been needed. I think that’s what the Fed Circuit was trying to do with the TSM test – to try to impose absolute, concrete objectivity on 103. The Supreme court ruled that the intentions of 35 USC 103 are broader than that, and that’s where the current interpretation of the law stands, basically no net change since Graham.

    The USPTO has no authority on that matter. It is out of the Agency’s hands. If people want to pay for a TSM test, and uniformly agree that such a formula contsitutes obviousness, then let Congress re-write the statutes. Until that time comes, we have what we have. This is it.

    As I said before, inventors and their counsel need to use the tools they have at their disposal. The system is only as flawed as 1) the law, 2) the people that administer the law, and 3) the people that use the law.

    With respect to part 3), file for a pre-appeal conference! All it costs is the Notice of Appeal fee, and the counsel fees should be low, since it’s a specific, focused response without the cumbersome formalities of a Brief. It gets two more pairs of eyes on the examiner’s final rejection within a week or two, rather than after the filing of the Brief, and can save the inventors from having to go the full Appeal Brief route, particularly if the examiner’s position is overturned, which happens almost 50% of the time, according to last-year’s statistics.

    Why doesn’t that help? You haven’t even acknowledged that the procedure exists and keep yammering on about the costly Appeals process.

    What defines a “crap patent”? I didn’t know there were so many. How do you know? Who are you to judge? Did you review every independent claim of every patent over the prior art of record? Everyone is human. There will be mistakes, and I will not disagree about the existence of the time crunch of the current production system. However, to make the blanket statements that the examiners are, by and large, basically selling their souls for the sake of production goals, that’s a serious accusation that cannot be flippantly given.

    You really need to stop making such blanket, innaccurate statements. With your position as an instructor and as a board member of the UIA, it is incumbent upon you to be responsible for actually KNOWING all the facts, or as many as you can reasonably gather, before making such assertions and assumptions.

    I wasn’t going to post any more, but I just can’t sit here and watch you disseminate crap. I have to say my piece.

    I’m not going to say any more. I don’t care about the proposed rule package, one way or another, so I’m not even going to go there. I wasn’t fond of Dudas, but fortunately, he’s gone, and whomever Doll turns out to be, he will be until he is replaced. That’s just how it is.

  23. Time to think April 14, 2009 1:43 pm

    I don’t know what to say about the backlog, prior to, as well as during, prosecution. Like I said: it takes time to properly examine an application, and the constraints of having an enforcable patent “yesterday” are mutually exclusive. It can’t be done. Only if the terms of patentability are simplified to 102. There’s insufficient time and resources to make obviousness determinations on every application within a reasonable time (less than 1 year, for example, from filing to issuance).

  24. Gene Quinn April 14, 2009 2:12 pm


    When are you going to realize and admit that the overwhelming reason RCEs are filed is because examiners refuse to issue patents that should be issued? Examiners play games, and everyone know it. We all have stories about an examiner refusing to allow something after Final because it was new, filing an RCE, and then the examiner issuing a final rejection in the RCE because nothing new was submitted. You can’t have it both ways. Examiners game the quota system, and who can blame them. The senior management allows these games and are to blame.

    When I said there is more to come in a few weeks on the BPAI it didn’t mean I don’t respect them. I am in possession of some information that I need to verify, but there is a big story about what senior management is doing to the judges on the BPAI. We all knew a huge workload was coming because examiners refuse to issue patents as a result of alleged quality review, and now it seems that reality is coming true and/or at least being planned for. Squeezing BPAI judges to do more work and dishing off work to those who are not appointed judges is not the solution.

    I am more than happy to define a “crap patent.” Believe it or not the First Amendment gives me the right to express my view. The fact that examiners don’t like second guessing is not my problem. Every week there are crap patents issued and KSR hasn’t helped, and neither has quality review. When a patent issues on a vaccuum cleaner that has 2 on and off switches as opposed to one, that is a problem. I don’t care that an invention is disclosed in the spec, when claim 1 describes a vacuum cleaner with the point of novelty being a second on-off switch that is a crap patent unless you believe there is no motivation to add a second on-off switch, which is simply an untenable position.

    If you can’t watch me disseminate the truth then stop reading

  25. Gene Quinn April 14, 2009 2:18 pm

    “I don’t know what to say about the backlog, prior to, as well as during, prosecution. Like I said: it takes time to properly examine an application, and the constraints of having an enforcable patent “yesterday” are mutually exclusive. It can’t be done. Only if the terms of patentability are simplified to 102. There’s insufficient time and resources to make obviousness determinations on every application within a reasonable time (less than 1 year, for example, from filing to issuance).”

    That is simply not true. The fact that the Office will not adopt procedures that could lead to the timely issuance of patents is the problem. The only change we need in patent law to help the Patent Office is adopting the PTO view of Rule 56. If inequitable conduct related to fraud, like it is supposed to, and had to be plead with particularity, like the law requires for every other fraud theory, then the PTO could adopt a process that requires information from applicants rather than a hide-the-ball game.

    You are right. It does take time to properly examine an application, and examiners are not given that time. The government is spending well over $1 trillion on stimulus and the PTO budget is $2 billion. That is pathetic. The one agency that can create value out of thin air and help private industry develop the technology jobs of the future gets $2 billion a year and has to fund itself. If Obama wants to help the economy he will double or triple the PTO budget, allow for the hiring of new examiners, cut pendency and move the economy ahead.

    I know there are a lot of hard working examiners, and I support them and the BPAI judges. It is time for someone who knows what they are doing to lead the Office, or at least get out of the way. From a human resources standpoint the Office gives examiners all the wrong incentives, measures the wrong things, and now is losing funding. Brilliant!


  26. Time to think April 14, 2009 2:48 pm

    That’s the first fair and honest post you’ve made in this series: you’re real issues are with USPTO management policies and incentives across business groups. It would have been nice to have that first.

    I think that the first action final rule should be abolished on principle. I also assume that the pre-appeal procedure should have reduced this feeling of “forced” RCEs by now.

    I know there are abuses by examiners. Please bear in mind that such abuse is a minority. A minority may seem like a lot, since there’s over 6,000 examiners, and a “minority” can be as much as one person less than half. However, in the spirit of the term, I believe that the gamers are truly a minority. Thank you, and good luck.

  27. Gene Quinn April 14, 2009 4:07 pm


    “That’s the first fair and honest post you’ve made in this series: you’re real issues are with USPTO management policies and incentives across business groups. It would have been nice to have that first.”

    You have to be kidding me! Obviously you have not read much, if any, of my writings. I have been harping on this for years now. Excuse me for not mentioning it in every single post I write or in every series of comments.

    I am not a part of the problem, I am working toward figuring out solutions. I respect the examiners and the BPAI, and some of the career folks who work very hard. The management is the problem. I would also suggest that those gaming the system are not a minority, or are a substantial minority.

    Thanks for reading.