Posts Tagged: "patent examiner"

In the piece, Lee tries her best to assure readers that positive developments have been made at the USPTO in recent years, but at multiple points she seems blind to major issues that have plagued U.S. patent system stakeholders during her tenure… Perhaps the most abrasive thing Lee stated in her editorial was this: “Our stakeholders share my belief, and that of my USPTO colleagues, that there is a cost to society when this agency issues a patent that should not issue…” No, Ms. Lee, a great many stakeholders do NOT share your belief. They don’t share your belief primarily because by making this statement you shine light on a largely fictitious problem while simultaneously ignoring the real problem facing the Office, which is that patent examiners refuse to issue any patents at all on good, high quality innovations that deserve patent protection.

Interactions between patent examiners and patent practitioners are often tense. At worst, these interactions can be an exercise in restraint with both parties thinly veiling their disdain for one another. This adversarial approach can stall prosecution and run adverse to the practitioner’s purpose – i.e., to obtain the best patent claim scope possible for his or her client. Patent practitioners thus could benefit in many instances by having a better understanding of an examiner’s expectations and approaching prosecution with a mind toward working with the examiner instead of against the examiner. A conversation with an Examiner in a mechanical art unit provided the following tips for how practitioners may expedite the examination process by working (to the extent possible) within the examiner’s expectations.

“[Time and attendance abuse] may not be widespread, but the data established that claiming hours not worked is a problem at the [USPTO],” said David Smith, Acting Deputy Inspector General of the U.S. Department of Commerce. Smith cited falsified hours from paralegals working at the Patent Trial and Appeal Board over the course of years led to more than $5 million in wasted taxpayer funds. As for the telework program, which at times has been closely associated with the time and attendance abuse scandal, Smith noted that while OIG recognizes that patent examiners can accomplish work offline, but the OIG also noted that certain patent examiners had no computer activity for 48 or more hours on 1,300 days over the course of the study. Further, Smith testified that 56 of the 415 identified examiners with large percentages of unsupported hours only averaged about 24 hours of supported work per 80 hours of analyzed work time. That’s about three working days within a two week work period.

Another unnecessary limit that US applicants almost always impose on themselves is in the number of claims. In Canada, there are no extra claim fees. As we all know, more claims are most of the times a good thing. In many cases, adding claims would require additional drafting and the applicant may not be willing to spend more on claim drafting. However, there are a few cases in which additional drafting efforts are small and for which adding existing claims to the Canadian patent application would be cost effective.

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

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

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

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

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

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

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

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

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

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

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