USPTO Budget Crisis and the Anonymous Patent Examiner

By Gene Quinn
April 13, 2009

Many readers will recall that on March 16, 2009, I posted an article titled Perspective of an Anonymous Patent Examiner.  That post was and has been one of the most popular posts ever on the IPWatchdog.com Blog.  Therefore, I was quite pleased to receive another e-mail from the same anonymous patent examiner over the weekend.  Not only is this type of exchange good for readership, but it is refreshing to hear that there is at least one patent examiner who is concerned about where the Patent Office is heading and is interested in trying to fashion solutions.  In reality, there are probably many patent examiners who are concerned about the current state of affairs at the US Patent Office.  I know retired patent examiners and officials who have left the Patent Office share this concern as well.  It is easy to lose sight of the fact that there are people within the Patent Office who do still care when the allowance rate is so low, application pendency is on the rise and there are reports that due to sham quality control some examiners have flat out stopped issuing patents altogether.  In any event, what the anonymous patent examiner had to say this time will shock you no doubt.  It seems that the budget crisis is so bad at the USPTO that the HVAC system will not be operating on Sundays any more.  Unbelievable!

The anonymous patent examiner had much more to say than to simply explain that things are getting extremely bad at the USPTO.  The examiner also presented an interesting idea with respect to how to try and handle the backlog.  I like what he/she wrote, and this patent examiner would like to hear our thoughts.  I am not 100% sure I would fashion a plan that is the same as suggested, but I have suggested something quite similar and I think it is an excellent place to start any debate on how to both get back to being the patent granting authority and address the backlog all at the same time. 

So, without further ado, here is the message I received from the anonymous patent examiner:

I am writing because things have gotten worse at the PTO and I wanted to get your opinion as a Patent Attorney on a potential solution that I came up with. Last week a memo was sent to everyone in the office that indicated that the maximum overtime hours would be reduced for revenue generating, patent examining activities and that on Sundays the office will be not be using HVAC systems in all the PTO buildings at the Carlyle campus. These actions show how dire the PTO’s budget situation truly is. However, as an examiner who is truly interested in issuing quality patents and who converses with applicant’s and applicant’s representatives on a weekly basis to accomplish this goal, I present the following pilot program which would solve the PTO’s, applicant’s, and applicant’s representatives problems.

The pilot program would require the applicant to draft the invention’s entire application except for the claims, with or without the assistance of an attorney. After paying a higher fee in excess of the current base patent filing fees, the applicant has the option to have one independent claim drafted by an examiner who would potentially examine that patent. The one claim would be drafted only after the examiner has had a preliminary interview with the applicant, the applicant’s representative, or both and has completed a search of the prior art. The search is done in an effort to determine the line between the disclosed invention (as opposed to the claimed invention) and the prior art. Along with the one independent claim, the applicant will receive prior art that reads on the disclosed invention and an argument as to how the independent claim overcomes the prior art. Under this program the standard examiner production requirements would have to be halved or quartered due to the time required to do preliminary interviews and draft a quality independent claim, but the number of cases allowed per year by an examiner on this program would be higher than the allowance rate in the examiner core, because this examiner’s only job is to do quality searches based on disclosures and draft allowable claims.

This pilot program would put the burden of examination back on the examiner (unlike the Accelerated Examination Program), the burden of disclosing the invention as detailed as possible on the applicant (especially in pioneering and cutting edge inventions), and the burden of case prosecution mostly on the attorney (who still has to draft dependent claims, other statuory class embodiments and file other prosecution related documents). Additionally, instead of working with claims that are initially rejectable the applicant starts with an allowable claimed invention and works towards broadening the one independent claim’s language and considering what to claim in dependent claims.

Having drafted independent claims off the record for applicant’s and applicant’s representatives on several occasions, I know that this saves everyone time and leads to a better claimed invention. Furthermore, while the claims I’ve drafted are usually substantially specific, I’ve never had an applicant argue that I didn’t adequately describe their invention. Therefore, having seen claims that overcome the prior art of record both cited, known, and obvious and that overcome any 101 issues (regardless of the current interpretation of 101), it is a lot easier to arrive at broader claims that are still allowable.

I guess I just would like to know what your opinion of this program is and whether your colleagues would be open to such a program.

 So let the debate begin.  I will be following up with my thoughts and ideas over the next day or two.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com 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.

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 33 Comments comments.

  1. Noise above Law April 13, 2009 11:49 am

    Gene,

    Great post and I welcome the subject for deabte.
    Here are some quick thoughts on the Examiner’s proposal:

    ***The pilot program would require the applicant to draft the invention’s entire application except for the claims, with or without the assistance of an attorney.

    Since claims are the meat of the application, claims are actually drafted first. Writing an application without regard to any claims seems untenable.

    ***After paying a higher fee in excess of the current base patent filing fees…

    This seems like another non-starter. The Office currently does charge more for longer applications and applications with more claims, yet examination guidelines do NOT provide for these fees to be reflected in the examiner standards for longer (possibly more complex) applications.

    ***Under this program the standard examiner production requirements would have to be halved or quartered…

    As noted with regards to several of my posts on Patently-O, the switch of the lion’s share of examination effort to the applicant with upcoming ESD’s and claim mapping, the standard examiner production requirements may actually be conceivably doubled or quadrupled, rather than lessoned – it is much easier to connect the dots of what an applicant can be forced to submit (MPEP level search and analysis). Further, the Office can actually charge applicants for the additional pages involved in submissions rather than paying its workers.

    ***This pilot program would put the burden of examination back on the examiner (unlike the Accelerated Examination Program)…

    …Or unlike the new and forthcoming ESD requirements.

    ***the burden of disclosing the invention as detailed as possible on the applicant (especially in pioneering and cutting edge inventions)…

    This burden is currently law – as in 112; either this is an area without change, or is more burdensome to the applicant without any additional benefit.

    ***and the burden of case prosecution mostly on the attorney…

    Not likely – as why would clients spend any more than necessary and if the examiner’s plan works as the examiner wishes, NO additional work would be necessary – an approved claim (and thus a patent) would be available with little or no attorney involvement. Of course, the value of such a narrow, very specific claim might prove problematic in short order.

    ***Additionally, instead of working with claims that are initially rejectable the applicant starts with an allowable claimed invention and works towards broadening the one independent claim’s language and considering what to claim in dependent claims.

    Dependent claims never broaden an independent claim, Trying to argue for broader independent claims MAY be interesting, but would likely involve either new full searches or uphill battles with 112 support. Plus, given that applicants will soon need to map claims anyway, this may only be a slight incremental improvement.

    *** Furthermore, while the claims I’ve drafted are usually substantially specific…

    As noted above, these types of claims have potentially questionable value for litigation and support purposes over the life of the patent.

  2. Frank Stallone April 13, 2009 11:51 am

    Drafting claims is the primary craft of the attorney. Any of my engineers can write a specification that describes their invention, but writing claims is an art that takes many years to perfect. Just because an examiner has read hundreds or thousands of claims, doesn’t make them qualified to write them. I know. I was a former examiner myself who thought that writing claims for applicants would be easy. Oh, how naive I was. Allowing examiners to draft claims would be an unacceptable solution to any sophisticated applicant.

  3. Gene Quinn April 13, 2009 12:18 pm

    I think that Frank and Noise are picking up on one important problem with the proposed pilot, which is the drafting of the representative claim. I would not be in favor of the examiner drafting the claim, but the process suggested is one that I think could work. I personally would like to see a preliminary interview with the examiner and discussion about the invention and to work with the examiner to hammer out language that would be patentable. This would give the applicant the ability to work to get something issued in relatively quick order and then go back for more later via continuation or RCE. Of course, if the new rules are ultimately enacted this becomes more problematic. That is why if I were running the PTO I would withdraw the rules and start over having the guidance from the Federal Circuit. What the PTO needs to be doing is creating incentives for applicants and examiners to work out language that is acceptable, issue a patent quickly so there are rights in a technologically relevant time frame, and then keep hammering out just how broad the prior art will allow.

    I definitely appreciate these comments, but let me ask how could you tweak this process? I know that historically over the past few years the Patent Office has not wanted to listen to input, but merely rejecting ideas is no longer an option. We need to force the issue with things that will work or the US patent system will become irrelevant (assuming it hasn’t already).

    -Gene

  4. Gene Quinn April 13, 2009 12:22 pm

    Noise-

    What about writing the claim set and then rather than submitting it as a claim set just making sure that is disclosed in the specification?

    With respect to higher fees, the trouble is that we have operated under the fiction that the PTO charges higher fees based on the number of claims. They do charge more for more claims, but they do not charge enough and have never seen examination as a fee for service because the cost of examining an application far exceeds what they charge. Why they then make it seem like they are willing to charge more for more work (i.e., more claims) is a mystery and set up an expectation in the industry that is not realistic and is fraudulent. Examiners don’t get more time because there are more claims, the cost just goes up. I think what the examiner was suggesting was that fees actually reflect the work that is being done.

    -Gen

  5. Nohj Edo April 13, 2009 10:04 pm

    Noise,

    ***Since claims are the meat of the application, claims are actually drafted first.

    I understand that the claims are the meat of the application but it is my personal opinion that backwards to think you can write a set of claims without having a specification written first. This is based on the fact that claims are meanless without support for the claimed subject matter being supported in the specification. Additionally, it may possible for both parties

    ***As noted with regards to several of my posts on Patently-O, the switch of the lion’s share of examination effort to the applicant with upcoming ESD’s and claim mapping, the standard examiner production requirements may actually be conceivably doubled or quadrupled, rather than lessoned

    Under the anonymous examiner’s proposal there is no need for ESD’s and claim mapping. This is most likely because such ESD’s, claim mapping’s are a waste of lawyer’s time and rarely useful when it comes to actual case prosecution due to the specific scope of claim language by the applicant and the broad interpretation of claim language by the examiner.

    ***This burden is currently law – as in 112

    I agree that the law requires adequate disclosure, but we can both agree that there have been plenty of applications where the support for cutting edge or pioneering claims was barely there (if present at all) due to the applicant filing for a patent before their cutting edge technology is even proven. Additionally how many times have we seen the Board of Appeals or a Circuit Court uphold a rejection or try a case, respectively, based solely on a 112 rejection (rarely if at all). Even though in certain situations a 112 rejection is the only rejection worth presenting because no prior art is going to adequate map to the claimed invention.

  6. Nohj Edo April 13, 2009 10:04 pm

    Frank,

    ***Allowing examiners to draft claims would be an unacceptable solution to any sophisticated applicant.

    While I understand that an attorney’s primary job is to draft claims. My view is that the anonymous examiner’s main purpose is to open the dialogue between examiner, applicant’s representative and applicant with the goal of making patent examination less of a confrontation us against them process. Furthermore, while I respect your opinion that examiners drafting claims is “an unacceptable solution”, should the office reinstitute the final rules or the courts issue more decisions like Bilski and KSR this may be the only route to allowance for the currently pending backlog of hundreds of thousands of patent applications with claims that were drafted prior to these rules and decisions. Finally, the applicant would much rather have claims that are intially allowable especially when the examiner is willing to help broaden the language, regardless who drafts the claims.

  7. Nohj Edo April 13, 2009 10:06 pm

    Gene

    ***I think what the examiner was suggesting was that fees actually reflect the work that is being done.

    The examiner’s do perform a service where they don’t earn more time for more complex or longer applications. However, actually trying to figure out what part of a disclosed invention an applicant is actually trying to claim and the examiner presenting his interpretations of the proposed claim language prior to sending out a rejection and even prior to filing the proposed claims is a service in excess of an examiner’s job. As a result, I understand how this additional service could 1) warrant additional fees, 2) be useful in minimizing the time to allowance, and 3) minimize litigation due to patent infringement.

  8. Noise above Law April 14, 2009 7:17 am

    Nohj,

    I appreciate the dialogue, so take what I say with some respect.

    You don’t know what you are saying.

    Your personal opinion about what is backwards to think only proves that you canot do justice to an applicant writing his claims. While it is true that the specification must support the claims, the specification does not come first. ever. unless you are not a good patent attorney (such as a pro se applicant). You capture the invention in the claims and drawings, then you write the specification to give body to the captured invention in the claims and drawings (50,000 foot view). In this way, claims, the meat, are never meaningless if the application is written correctly.

    “Under the anonymous examiner’s proposal there is no need for ESD’s and claim mapping. This is most likely because such ESD’s, claim mapping’s are a waste of lawyer’s time and rarely useful when it comes to actual case prosecution due to the specific scope of claim language by the applicant and the broad interpretation of claim language by the examiner.”

    There are many logical faults with this statement. We’ll begin with specific scope of claim language by the applicant and broad interpretation of claim language by the examiner. It would appear that you think applicants write narrow claims. This is hardly true, and claims are purposely written as broadly as allowed by law in order to capture as much rights as possible under the law. I don’t have issues with broad interpretation of claim language by examiners – I expect it. I do expect that the broadness must be contained by the specification and that NOT ANY interpretation of the claims is permissable (this is properly documented in the current Law). Frank is correct. There is no way for examiners to be the applicants’ representatives in writing claims. To address Frank’s concerns, you slip into “the rules pass” mode, and to answer my concerns you slip into “no rules pass” mode. You can’t have it both ways.

    Even granting the incorrect logic of specific appllcant claiming and broad examiner interpretation, I wonder, if you think ESD’s and claim mapping are awaste of time and rarely useful when it comes to case prosecution, why was the Office so adamant about them (especially in large complex cases)?

    Put it this way – the Office wants things drawn out. They want the dots in place. If the examiners cannot do it (for whatever reason), then the Office will have the applicants do it. ESD’s will not be going away. If anything, expect them to be mandatory regardless of claim number. Tafas v Doll virtually guarantees this. This will happen even in the Examiner’s proposal. The Office will be forced to this path in order NOT to appear capricious and uneven in the handling of its rules and to avoid an explosion of applications (many carved from the same specification in order to avoid claim number limits). And if the examiner B is correct over at the Patent Prospector, the new mantra is pendency – increasing the queue with the explosion of smaller claim set applications will fail that measure of “quality”.

    “but we can both agree that there have been plenty of applications where the support for cutting edge or pioneering claims was barely there (if present at all) …”

    Here we can discuss. Barely there is still there. If not enough, then reject. If not present at all, then reject. I have no problem with you doing your job in this area. It is the Law. It is aggravating to see the Office pursue its Law-making agenda when the tools of the Law are at hand and can be applied, but are not. Are examiners afraid to apply the 112 Law? Nohj, why is this an issue?

    Gene,

    You ask for how we can tweak the system. How about we use the system (the Law) first before we start tweaking. The Law is good. If the support is bad, change the support. The support is the Office (mis) management and the count system. As I posted in another thread dealing with IC:

    “…we are discussing two different problems. My answer then would be to fix the primary problem – do not allow patents that should not be allowed. I care not what the cause of the problem is – fix it (well, actually I care very much). My mantra long has been that the Office should focus on providing patents with the law as they have it, not spending so much time, energy and money on their power-grabbing change-the-law agendas. If the procedure in place only allows 12 hours to vette a patent and that’s not enough – change the procedure. Don’t burn down the house to get a piece of toast. Patents have power precisely because they have a presumption of validity. Remove the presumption and you might as well use a registration system and not bother spending any time at all examing patents. The presumption carries power through more than just the immediate legal system – think of the financing aspects for one. I still think you are throwing away the baby and keeping the bath water. Further, there are other methods available to root out bad patents. I simply cannot see reasoning that states IC charges are a legitimate tool for attacking bad patents and stating the problem as the patent. The IC issue needs to be dealt with straight on. To use IC for any other agenda, no matter how appealing the end result, is simply not acceptable.”

    Don’t tweak what doesn’t need tweaking. Tweaking the law only brings unintended consequences and further tweaks and further unintended consequences.

  9. Intersted Party April 14, 2009 8:12 am

    Having the HVAC not working on Sundays is not “unbelievable.” Many companies have been doing the same for quite some time since it saves a lot of money. But yes, I think the PTO will be in a world of hurt.

  10. David Breed April 14, 2009 8:28 am

    I am an entrepreneur and inventor (>200 patents +>100 pending). In the automobile industry once we understand a problem (such as occupant sensing) we can find many ways of solving this problem and could file literally 100 patents to cover all of the apparatus and methods. As a small company we cannot afford to do so (~$1 million) and so we file a smaller number of patents each with multiple inventions and claim the one that we think is the best (optics). The auto industry usually picks an inferior solution (bladders) perhaps thinking that they have avoided our patents at which point we file an application that covers the previously disclosed by us technology (bladders). Since we cannot control which of our technologies they will choose we, and certainly not an examiner, do not know which one to claim.

  11. Gene Quinn April 14, 2009 10:49 am

    Interested-

    I understand what you are saying, but I do believe it is unbelievable, at least in the greater context. What a responsible company would do to cut costs is one thing. What a failed agency with over a million pending applications does is another. Rather than try and fix the mess they have created the USPTO is choosing to shut off the AC. Talk about rearranging the chairs on the deck of a sinking ship.

    -Gene

  12. T April 14, 2009 11:12 am

    I’m not sure what the purpose of not filing claims is in the suggested program. What harm is there if the applicant submits claims as a starting point?

    I very much like the suggestion that the Examiner read the specification and be given time to do so. Haste makes waste. The proof is in 90% of office actions I receive.

    The rest of the suggested pilot program is an outline of European practice. In Europe an examiner will often reject claims but suggest that it appears that paragraph 42 could form the basis of an allowable claim (for example)….

    I don’t think we need a pilot program for that. I think an examiner is able to do that now.

  13. Jeff Sheldon April 14, 2009 11:39 am

    Two significant problems. For some examiners this would work, but for many it will not. Being able to examiner applications does not translate to the skills needed to claim an invention. It is not uncommon for a firm that has hired an ex-examiner to learn that the hiree is unable to write decent claims. That has happened to us.

    Second, many patent practioners start with claims when drafting a patent application. That is what I I recommend in my book, and many attorneys subscribe to that approach. The claims provide the summary, abstract, and terminology.

    I appreciate the thought, but that is not the solution to what troubles the Patent Office. The proposal would help the unrepresented inventor, but for inventors hiring professionals, it would not work.

  14. Nohj Edo April 14, 2009 11:44 am

    Noise,

    ***While it is true that the specification must support the claims, the specification does not come first. ever.

    I admit that I may had been brash in saying that it was “backwards” to write claims first. However, if it is true that claims are always written prior to the specification, this may be part of the problem as to why the claims while are often time too broad and read on the applicant’s disclosed invention and several similar inventions that aren’t the applicant’s invention (especially in software relate patent applications). Therefore in writing the specification first and also understanding the most novel portion of the disclosed invention it makes more sense to me to then draft claims which intend to protect that novel portion. But that is just my opinion. This will also help move cases towards allowance should an examiner ever ask an applicant or applican’t representative what the most novel portion of the disclosed invention is.

    ***We’ll begin with specific scope of claim language by the applicant and broad interpretation of claim language by the examiner. It would appear that you think applicants write narrow claims.

    My previous statement that applicant’s claim language being narrow was incorrect and does cause my previously presented logic to be faulty. I should have said that their interpretation of the drafted claim language is specific while the examiner’s interpretation of claim language is broad.

    ***I wonder, if you think ESD’s and claim mapping are awaste of time and rarely useful when it comes to case prosecution, why was the Office so adamant about them

    The Office’s positions and the examining corp’s positions regarding rules and decision may not always be the same. Additionally, you will rarely (if ever) hear what the examining corp’s opinions are.

    As to why the office was adamant, whatever I say is only conjecture. But for the case of argument, if you were the management of a government agency, wouldn’t you stand behind any policy you implemented without flinching, regardless of any else’s opinion, and regardless of how effective the policy truly was?

  15. Gene Quinn April 14, 2009 12:03 pm

    David-

    You are bringing up an important topic here, perhaps unintentionally. The automobile industry has refused to incorporate advances for reasons that are beyond me. Of course there are always conspiracy theorists, and perhaps there is something to that, I don’t know. When you talk about them using inferior solutions so they don’t have to pay patent royalties, that seems to make more sense to me. But where is the government in all this? It seems that our government is propping up the auto industry, which at best is a tremendous failure. I don’t see foreign manufacturers suffering the fate of 2 of the big 3. So we pump money into them so they can continue to fail. They practically have a government monopoly, and the government continues to help those companies that can’t succeed on their own. At the same time, energy independence is compromised, which compromises national security. This gets so depressing. Maybe if government put people in charge that knew what they were doing and what the patent system ought to be and could be we wouldn’t have these types of problems. A novel concept.

    -Gene

  16. Gene Quinn April 14, 2009 12:07 pm

    Noise-

    I typically agree with much of what you say, but you are really overstating when you say that in order to be a good patent practitioner you need to write the claims first. That is not true. I never write the claims first. I always write the specification first, then write claims, then go back to the specification, etc. until I am happy with the claims and know that the claims are supported. That does not make me a bad patent attorney, although my process is admittedly not the norm. I personally find that I have to get started writing to get my thought process flowing, and for me rather than start with and stare at a blank page I get my fingers going and mind working by writing up in understandable terms what the invention is and how it is better than the prior art. I don’t think there is a right way or a wrong way to draft a patent application. What we do is an art and what works for one may not work for others.

    -Gene

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

    Jeff-

    Thanks for joining the debate. I am a huge fan of your book (How to Write a Patent Application) and recommend it to everyone. I personally think it is the best book out there on this topic. I use it to teach my law school students, although I do not write the claims first. I know I am unique in that regard.

    I agree with you that examiners are not typically good at writing claims. They are good at taking them apart, but that is a different skill set. I am not saying that all are not good at it, but examiners bring a different skill set.

    What would you suggest in terms of solutions? Are you against an initial conference between applicant/attorney and the examiner? I personally would like to see more of a collaborative effort early on, where the applicant/attorney can talk to the examiner and fashion a claim together that the examiner would allow. I think this would lead to quickly getting some protection, then continuation to go broad. The type of collaborative approach early on that I envision would really require inequitable conduct reform, and perhaps a sealed record of the initial meeting, which could only be broken if true fraud were plead with great particularity, as is require everywhere else in the law. What do you think?

    -Gene

  18. Gene Quinn April 14, 2009 12:30 pm

    T-

    From what I hear we probably would need a pilot program to allow examiners to read the specification. The specification is not read by many examiners. Examiners focus on the claims and sometimes only read the claims. Unfortunately, they do not get much time to review applications so who can blame them for not reading the specification. I would be for giving examiners time to actually read.

    -Gene

  19. TT April 14, 2009 2:24 pm

    I am a bit curious how experienced your “anonymous patent examiner” may be? Primary, Partial Signatory, Newcomer? It is almost a yearly ritual for the USPTO to restrict overtime hours near the end of a budget cycle. As soon as the budget passes, then overtime restrictions are always lifted. They only people burned by this are Examiners who routinely do maximum overtime and have been relying on the extra money for essential payments. Similarly, at least once in the past five years the law school program was restricted, and then reinstated a few months later, as soon as the budget passed. In any case, the sky is not falling, just SNAFUed.

    The suggestion that Examiners should read the entire specification is simply naïve. The time allotted by the USPTO for the entire prosecution of the case, from the first restriction, to first office action, then to allowance is so short that such reading is physically impossible.

  20. Gene Quinn April 14, 2009 3:38 pm

    TT-

    I don’t know how experienced the anonymous patent examiner is. With all the budget cutting I think we should wait and see about the overtime and see if that is a typical part of the PTO routine, or if it is something more.

    I agree with you that it is physically impossible to read given the time, but I think we need to look at that as odd rather than naive. Yes, we cannot expect that of examiners, but why not? Shouldn’t we be able to expect examiners to actually read the application? Why require a specification if it is never considered? Why give a patent a presumption of validity if it is never read?

    -Gene

  21. EG April 14, 2009 4:09 pm

    Gene,

    I also don’t generally start an application by writing the claim set, or at least more than the broadest claim(s). Like you, I often start with specification, usually followed by the Summary which has the broadest claim(s) I plan to start with. I’ve found over about 32 years of practice that, until I work out with the inventor/client what the specification looks like (the draft of which I send to the inventor/client is usually peppered with many, many questions, blanks, etc.) to describe the invention and its various embodiments, trying to draft a complete (or more than a representative) claim set is an exercise in futility, and generally a wasted effort. That’s especially true of chemical practice, and now even true in mechanical practice.

  22. Noise above Law April 14, 2009 10:09 pm

    Nohj,

    Thank you for taking the time to be heard. You mention that examiner’s views are often not heard. If you read the patent blogs, you will see that some examiners are heard WAY too much and really bring a bad name to the game. I appreciate that while we may not agree, you do not seem to be a raving lunatic. I applaud your efforts to be heard.

    As Gene points out (correctly), I too was a bit harsh with the order of drafting. To each his or her own, and the art may be very flexible to a variety of approaches. I realize I sounded overly dogmatic and that was my error.

    I do have an issue with one part of your reply:”…But for the case of argument, if you were the management of a government agency, wouldn’t you stand behind any policy you implemented without flinching, regardless of any else’s opinion, and regardless of how effective the policy truly was?”

    My answer (at the risk of being dogmatic, again): most assuredly NOT. Patent Law is not my first or even second calling. My views are grounded in real world results. To stand unflinching regardless of how effective a policy is, is the epitome of lunacy and hubris that truly mars and disgraces the Office and poisons the relationship with the patent bar. You seem like a fairly reasonable person. I would advise you NOT to drink from that cup of Kool-aid. Not only is it hubris, it is against direct executive orders as David Bundy has much more eloquently stated on the Patent Blogs (maybe David can post a link to a succinct summary). I can see absolutely NO valid reason for such a stand.

  23. Gene Quinn April 14, 2009 10:11 pm

    EG-

    Perhaps this is why we always seem to agree on things. It seems our brains work alike. I agree completely. Until you can hammer out what the invention is in plain language any claims are futile. What I find is that many times the claims that are drafted based on disclosure provided would simply read on the prior art. What I do is try and spend meaningful time going through the prior art with the inventor and getting them to help me work through what is really unique. This then lets me create the target description, which is what I like to call “the money paragraph” when I teach law students. This is essentially the description of the broadest claim in ordinary language, which then gets translated in patent-speak in the broad claim. It is a process that works well with me, and I think one that leads to really excellent applications because I force the inventor to be involved, at least early on in the process.

    I hope all is well with you.

    -Gene

  24. Nohj Edo April 15, 2009 7:55 am

    Jeff,

    ***For some examiners this would work, but for many it will not. Being able to examiner applications does not translate to the skills needed to claim an invention.

    I agree that not all examiners will not be able to draft claim language. This is because not all examiners have acquired the knowledge of the law and an understanding of the pending patent application to appropriately draft claims. However, there are several former patent attorneys and experienced examiners who are fully capable of distinguishing between applicant’s interests and their duty as an examiner. Furthermore, if the anonymous examiner’s proposal only helps the unrepresented inventor, that would be a move in the right direction.

    TT April,

    ***It is almost a yearly ritual for the USPTO to restrict overtime hours near the end of a budget cycle.
    ***The time allotted by the USPTO for the entire prosecution of the case, from the first restriction, to first office action, then to allowance is so short that such reading is physically impossible.

    Regarding the budget cut backs, it is true that this happens at the PTO, but it has not ever happened due to the lack of fee collection. The current situation is in no way “business as usual” for the PTO.

    Regarding the time allotted, examiners and prosecutors both know that this is a problem, that is why it is important to have the most novel portion of the disclosed invention admitted by the applicant as soon in the prosecution process as possible, and ensuring that the inventive element is properly claimed.

    Noise,

    ***You mention that examiner’s views are often not heard. If you read the patent blogs, you will see that some examiners are heard WAY too much and really bring a bad name to the game.

    I agree that examiners comment on blogs, but are blogs really an adequate platform for effecting change to patent policy. When was the last time the Patent Office asked the opinion of the examining corp when making policy changes? Policy setting organizations (e.g. PTO Management and Patent Bill drafters) always receive input from the public in the form of corporations, inventor associations, law firms, etc., but who represents the people who actually have to implement the policies on a daily basis? My point was more that the people who make the policies don’t hear examiners. Why this happens, who knows. Will it change? maybe. Is it a problem? Definitely.

    To Everyone,

    I think now is not the time to only shoot down proposals without offering suggestions. This has been done for way too long in the IP community. If you don’t like an idea that is fine, but without offering other ideas or suggestions we as a community won’t get anywhere. We all have the common goal of protecting IP, advancing innovative technologies, and making some money while we are at it. We just need to be more open in communications. I honestly think that simply making a phone call prior to an attorney sending arguments/claim amendments and an examiner calling prior to sending a rejection will save everyone time. This way issues that are easily overcome can be handled without have writing/reading pages of arguments/rejections. Maybe they should have a phone call pilot program.

  25. broje April 15, 2009 10:03 am

    In essence, this “pilot program” has already existed for many years. Please see MPEP 707.07(j)(I). The substantial changes I see proposed are that the application can be filed with no claims at all, the claim will be written for applicants that are not pro se, and that the Exmainer will be rewarded for identifying the allowable subject matter and writing the claim. When I have discussed this section of the MPEP with other patent attorneys in the past, the general consensus is that it is worthless because Examiners tend to write extremely narrow claims. I have often though it more likely that Examiners find it much easier to simply assert that they have identified no patentable subject matter, rather than go to the trouble and, under the quality assurance program, risk of proposing an allowable claim. In addition, the bonus program rewards Examiners that reject applications and force RCE after RCE, while impermissably holding back the best art found in the initial search, and getting credit for multiple final dispositions with little work. Plus, I think that Patent Attorneys simply don’t inform potential clients of this provision because it is not exactly good for business to encourage your client to go pro se. Moreover, patent attorneys make more money in prosecution fees when the application is repeatedly rejected, rather than brought into condition for allowance right away.

    Personally, I think it might be worth a try to extend the existing provision to applicants that are not pro se, and to even require the Examiner to propose an allowable claim in every office action. I do not know how to get past the problem that the Examiner can simply assert that there is no allowable subject matter. And the ABA and many other organizations oppose instituting any reward to encourage Examiners to allow, rather than reject, applications. We should at least get rid of the bonus systyem that rewards Examiners for repeatedly finally rejecting an application.

    “707.07(j) State When Claims Are Allowable [R-5]

    I. INVENTOR FILED APPLICATIONS
    When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.

    This practice will expedite prosecution and offer a service to individual inventors not represented by a registered patent attorney or agent. Although this practice may be desirable and is permissible in any case deemed appropriate by the examiner, it will be expected to be applied in all cases where it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications.”

  26. EE Examiner April 15, 2009 1:40 pm

    Nohj Edo,

    ** When was the last time the Patent Office asked the opinion of the examining corp when making policy changes?

    Last July. High-production examiners were invited to a series of “focus groups” with Peggy Focarino to “learn about [examiner’s] experiences and assessments about the production system.” As an examiner who participated in such a focus group (we were asked to keep the content of the discussions confidential), I can state unequivocally that any revisions to the production system discussed therein appear to have found their way to the circle file. These “focus groups” and other input PTO management gathers from examiners or outside sources (remember the MBA students that were supposed to fix the production system last year?) appear to be little more than the PTO’s lip service response to years of GAO reports calling for the PTO to revise the decades-old production standards.

    That said, hopefully the severity of this current UPSTO budget crisis will be the catalyst that sparks the next director to seriously consider useful solutions from all interested parties.

    My Solutions?

    1) Incentivize examiners (either monetarily or through revisions to the production system) to work with applicants/attorneys to get allowable subject matter into the independent claims asap. (a la the pre-action interview pilot program).

    2) Allow for group examination of “large” or “complex” applications among junior examiners. Large or complex apps. often receive a de facto group examination when the junior examiner assigned to the case spends hours discussion the technology with primaries in the art. Also, such increased coworker interaction could indirectly address the turnover issue by fostering a more congenial work environment. (Yes, a group examination pilot project was tried a number a years ago and “failed”, if you believe PTO management conclusions, but given the number of new examiners hired in recent years, I would like to see another try.)

    3) Abolish the 1 hour on-campus weekly requirement. This obviates the need for regional offices and would allow examiners to work from home anywhere in the U.S., thus allowing the office to attract top-tier talent truly nationwide.

    Thanks to Gene for starting this enjoyable discussion.

  27. Noise above Law April 16, 2009 6:36 am

    And thank you Nohj for upgrading the impression of Examiners to at least one member of the Patent Attorney Community.

    6 – please, please take note – straight forward, no gotcha, no games. I feel like I’m actually conversing with a professional.

  28. Gene Quinn April 16, 2009 10:28 am

    Noise-

    I have to echo your statement. I have been hearing from a lot of folks who obviously work inside the PTO and it has been refreshing to learn that they are as concerned as many of us are about the direction of the patent system. This could bode well for the future.

    -Gene

  29. 6 April 17, 2009 2:07 pm

    “Drafting claims is the primary craft of the attorney. Any of my engineers can write a specification that describes their invention, but writing claims is an art that takes many years to perfect. ”

    That’s funny, because I’ve amended claims far away from what was originally claimed and had attorneys repeatedly exclaim that it was an excellent claim compared to the original. REPEATEDLY. And not just for flattery’s sakes I’m fairly sure. Gee, took a lifetime. Or, wait, maybe somewhere around a year or two. The real trick imo is just to use the flowery, precise, and technical claim drafting type of language that attorneys like. Maybe I’m just a natural, who knows?

    I agree that writing claims at the very beginning would be hard as sht. But if you actually wrote down the invention (in a draft application sort of document) and then wrote claims from there it wouldn’t be all that hard in most cases. Granted, in some cases it still would be. Idk, at least this is in my art. To tell the truth, I would be tempted to draft many many claims for many applications where applicants don’t currently ($?).

    “While it is true that the specification must support the claims, the specification does not come first. ever. unless you are not a good patent attorney (such as a pro se applicant). ”

    Or merely a good attorney who does things differently. There were a couple over at PO the other day. Don’t presume your way is the only way. So presumptuous. There is no way to definitively say that one cannot capture the essence of the invention from a prewritten filled out app.

    “I do expect that the broadness must be contained by the specification and that NOT ANY interpretation of the claims is permissable (this is properly documented in the current Law). ”

    Lolz, and you just got through making fun of him. Certainly not unjustly, but still it was ironic. FYI consistent with the specification doesn’t mean “contained in the specification”.

    “Having the HVAC not working on Sundays is not “unbelievable.” Many companies have been doing the same for quite some time since it saves a lot of money. But yes, I think the PTO will be in a world of hurt.”

    Indeed, I always wondered why they would pay so much money to have so few workers working (out of the total that is, not in terms of no.’s). I’ll simply work from home if the AC is out on Sundays. Actually I think I came in last Sunday and it was not on, it was a bit hot in my office, but then I opened the door n it was ok.

    “Rather than try and fix the mess they have created the USPTO is choosing to shut off the AC. Talk about rearranging the chairs on the deck of a sinking ship.

    -Gene”

    Gene I don’t think you understand how to run a large organization very well 🙁 No insult intended, I’m sure you’re a great attorney. Running a large organization is all about cashflow. If you have less cashflow than you expected to have then you have to cut the current budget. Let’s say that leads to no examiners coming in on Sunday. No problem. The backlog gets | | this much higher but budgetary disaster is avoided. All in a day’s work.

    Personally I’m surprised that they didn’t cut out Sat too, but for right now they probably figured that a lot more come in on Sat so it was worth keeping.

    “I agree with you that it is physically impossible to read given the time, but I think we need to look at that as odd rather than naive.”

    Guys it is not impossible to read the spec. Even the 50 pagers. (I will give you that perhaps it gets tough on the 150 pagers, but you just gotta skim some stuff, I think we all know how to read here). I have read from cover to cover every app I’ve done. Sure, it was boring and tough to make it through, and sometimes you just have to skip ahead and come back to something later, but it isn’t impossible to read the spec. Sometimes I find it very helpful, sometimes not, it depends. But, on the other hand, attorneys are often surprised that I can recall a case I worked on 3 mo ago as if I had just put it down. I know what is going on in my cases, on many occasions better than the attorney does, and that doesn’t come from just reading the claims.

    “6 – please, please take note – straight forward, no gotcha, no games. I feel like I’m actually conversing with a professional.”

    He can’t “gotcha” because he never gotcha. His idea is pleasant on the surface, and I’m all for it if most examiners had even rudimentary claim drafting skills, but since they don’t I’m not. The existing system is just fine imo, not to say that there isn’t room for improvment, but a time of recession is hardly the time to f around with a decently functioning system.

    The budget is fine. All of you need to stop your sky is falling mentality. Maybe some people get fired. Maybe we have some furloughs. This is a recession. That’s what happens. One of my old ex’s was telling me about how she was having furloughs at her job (even slightly before the recession hit full on) and sure it sucked and made for a worse working environment for her, but that’s how it goes. She choose her path and now she’s living it. If she can man up to it, I’m sure the rest of us can, she’s quite wussy.

    In the end we can all just marry rich right? Except Noise, because nobody loves him 🙁

    Some real questions for you guys to consider would be these:

    Why have filing fees not gone up to cover these expenses?

    Why do we not enforce “concise” better with regards to U.S.C 112?

    If you really want to discuss a pie in the sky change to the system why not simply have the attorney, the examiner, and the applicant all work together on hammering out claims as in the proposal of the OP? Instead of having OA’s, simply set a date for an interview, have everyone meet and come up with various proposals for claim language after a spec has been submitted, which may or may not have had an attorney draft some initial claims first before being written. Attempt to put all the claims together the best possible. Then set another date after a search is carried out, and rediscuss the claims taking into account the prior art. This takes into account the avg attorney’s wish to draft some claims first before getting to the spec. Sure, this way of doing things has problems galore, but who gives a sht? We’re just spitballing bs alternatives, and the current system has problems too. One of the bigger ones you might be familiar with is estoppel. Another one you might be familiar with is recieving an office action that is plainly wrong, and where it would have taken a whole sentence to have pointed it out to someone in a discussion it takes an entire formal reply, and then recieving another OA and another and another. Both of these problems are all but eliminated. And, in my scenario all parties are bringing something to the table. The attorney brings his experience with making sure a good claim is being presented, the examiner brings his knowledge of the art, claim dissection and decision making, and the applicant is there for any ancillary concerns such as what he is willing to accept and perhaps some definitions of words etc.

    I have to go work out, and then go to a party so I’ll see you guys later.

    Oh and Gene we’re still awaiting the second post of your history of software patents series I believe. I haven’t checked your main page in awhile. Looking forward to it.

  30. Gene Quinn April 17, 2009 4:49 pm

    6-

    I find it difficult to believe that attorneys praise you with any sort of sincerity. Examiners are not good at writing claims. It is not what they do, and is in no way a poor reflection on them. I too would praise you if you would write something for me that you would issue. Then take what I can get and file a continuation. I sense you are being played by attorneys and believing what they say about you may be going to your head.

    As for me not knowing how to run a large organization, well, maybe we will find out someday if given the chance to run the USPTO. I think it is obvious that you do not have any idea about what you are talking about. The senior leaders in the USPTO are very concerned about the budget, and for good reason. They have repeatedly stood in the way of sensible internal reforms and have created their own mess. Doing anything that would result in the backlog growing or pendency increasing is near criminal. So you can feel that shutting the HVAC down is a good move, but it would have been a MUCH better move not to cause the budget problems that have lead to such a step in the first place. The USPTO is becoming like most major corporations. When times are tight they stop advancing, lay people off, stop R&D. As if that is going to lead to anything but an organization in decline.

    With respect to software patents, Part II was published on April 1, 2009. See:

    http://www.ipwatchdog.com/2009/04/01/history-of-software-patents-arrhythmia-research/id=2399/

    It looks like this will wind up being at least a 4 part series, probably more. Hopefully Part III will be ready to go in another few weeks.

    -Gene

  31. PTO Examiner April 19, 2009 8:32 pm

    I posted a similar pilot suggestion over at Patently-O maybe 4 months ago. Mine goes like this:
    Any examiner GS 12 or higher has a second count system correlating to their performance called A-counts.

    In a FAOM of any application (either initially or after RCE), the examiner is REQUIRED to submit an examiner proposed suggestion into the very end of the OA. The examiner has two options:
    1) State that it is the opinion of the examiner that there is no disclosed patentable subject matter.
    2) Provide a proposed claim amendment that would make the claims allowable pending a final search.

    In the reply, the attorney may adopt the proposed claim amendments if they so please.

    In case 1:
    The examiner gets zero A-counts.

    In case 2:
    If the proposed claim amendment is adopted and the case is allowed, the examiner gets an A-count.
    If the proposed claim amendment is adopted and the case is subsequently rejected (after a final search), no A-count is awarded.
    If the proposed amendment is adopted and, subsequent a final search, the examiner proposes a further claim amendment that is also adopted and allows the case, the examiner is still awarded the A-count.
    If the proposed amendment is not adopted, no A-count is awarded.

    At the end of the quarter, the examiner receives a monetary payment directly proportional to their A-counts and weighted by their production requirements.

    Examiners are therefore provided incentive to find allowable subject matter in a case and identify it to the applicant. Examiners should be unlikely to jerk around attorneys by providing weak amendments they know they can reject after a final search, because it burns the bridge for salvaging an A-count during the RCE (assuming attorneys wouldn’t adopt another proposed amendment).

    There are definitely some flaws to the concept. For instance, the monetary incentive would have to be pretty high to motivate an examiner to go out of their way, read the spec thoroughly, and draft claims.

    Another is the legitimacy/weight of an examiner making the statement of case 1. If an examiner is lazy they may always just say “nothing patentable here”, which liquidates its valued accuracy in the minds of attorneys. Which brings me to another point that I’ve noticed recently. During my interviews, I’ll be straight up and tell the attorney when there is nothing patentable in the case and/or they’ll have a very hard time getting something allowable out of the spec. More recently it seems that attorneys are blowing this off, filing RCEs, etc. I realize the client has the final say, but is this statement from the examiner being treated with less weight nowadays?

  32. Gene Quinn April 19, 2009 8:44 pm

    PTO Examiner-

    Thanks for your comment. Just to be clear, you are suggesting that this be adopted and not stating that this is the way it is currently, correct?

    I think attorneys and agents are treating examiner statements with much less weight today. There is a perception among the patent bar that the senior level management has ordered examiners to reject everything. Additionally, there are some examiners and groups that have not issued patents in years. There are many examiners that just give garbage rejections and simply refuse to work toward reaching any kind of sensible resolution, which ultimately forces RCEs and the like. On top of that we hear senior level management blaming the patent bar for all the ills of the USPTO. I know there are a lot of great examiners in the Office that take the job serious, but there is a lot of nonsense and that has caused attorneys and agents to believe many, most or even all examiners are a part of the problem. There is a lot of distrust, and we need to get past that and on to workable solutions. But if you could see some of the OAs that I see and hear about you would understand why attorneys and agents are not willing to believe what you say is genuine.

    Thanks for your input. This is the exact type of stuff that we need. The more ideas the better.

    _Gene

  33. 6 April 20, 2009 12:44 pm

    “I find it difficult to believe that attorneys praise you with any sort of sincerity. Examiners are not good at writing claims. It is not what they do, and is in no way a poor reflection on them. I too would praise you if you would write something for me that you would issue. Then take what I can get and file a continuation. I sense you are being played by attorneys and believing what they say about you may be going to your head.”

    Knowing the rest of the examiners that I do I also would find it difficult if I hadn’t seen some rather gorgeous claims pass my lips. To be honest with you though, all I’m doing is copying other people’s styles of drafting and applying it to the instant claim, it isn’t rocket surgery. For example, we have x feature that we want to positively recite, in such a manner as not to allow me to squirm around the limitations and still reject when I get off the phone. So I think back, how is it that I’ve seen this type of thing recited properly in other cases? Most of the situations I run into are similar, and I’ve seen the form of the solution to their problem in the claim in previously amended claims in other cases. I can’t claim any exceptional talent at drafting claims from whole cloth, I would say that I’m not half bad at drafting amendments though. Although, the claims I see don’t take a whole lot to have put down what they did initially 🙁 There are well written claims in good cases, and there are claims that aren’t so great in others.

    “The senior leaders in the USPTO are very concerned about the budget, and for good reason. They have repeatedly stood in the way of sensible internal reforms and have created their own mess. Doing anything that would result in the backlog growing or pendency increasing is near criminal.”

    LOL W U T? Gene, gene, gene. Are you proposing that all the pto directors that have been letting it grow to this monster have been nearly criminal in their actions? Of course not.

    You don’t like what they’re doing. We get it. Neither do they. Hopefully you get that.

    Btw, what are these “sensible internal reforms”? I’ve not heard much about them. And please, don’t bore me with proposing getting rid of “reject reject reject” since I currently feel little if any pressure to reject a patent anyway, unless it plainly is subject matter that is not eligible for a patent. .

    “So you can feel that shutting the HVAC down is a good move, but it would have been a MUCH better move not to cause the budget problems that have lead to such a step in the first place.”

    Well, you’re right Gene, we should have prevented global economic downturn. Unfortunately even Dudas isn’t God, and even with all his 6000 men he could not have saved the economy of the world. Also, brave king leonidas and his 300 should have prevented xerxes millions from passing the hot gates, but come on man. Wave upon wave of useless corrupt bankers crashed upon our shields and still we stand tall!

    http://www.youtube.com/watch?v=xMPyrwF6GWY

    “It looks like this will wind up being at least a 4 part series, probably more. Hopefully Part III will be ready to go in another few weeks.”

    Sounds good, I was thinking it would be just a 2 parter, but that’s fine. If you would be so kind, try to keep the subjective commentary in the actual article itself to a min if you would, you’re producing a valuable resource here, no need to taint it.