Posts Tagged: "patent examiners"

As the old saying goes: Ignorance of the law is no excuse. So there seems to be no good reason that the Examining corps’ inability to apply the law to the facts in ex parte appeals should be costing applicants this much money yearly. We should not have 2X higher reversal rates for novelty and obviousness than statutory subject matter. However, until something changes about how the USPTO decides to take cases to the board, it is apparent that patent applicants will continue to have to be patient and pay.

One promising approach is to argue that the claims are directed to a specific technological solution to a specific technological problem, as has been successful in the courts. But, even this may not be convincing, if argued in the abstract, because, after all, we are dealing with abstract ideas to begin with, and it is all too easy for an examiner to dismiss an abstract argument as “not convincing”. A concrete, bright line test can be constructed, which may sway an examiner (or appeal board, if the rejection is appealed). Articulate a specific technological problem that the claims solve or are directed to solving. Analyze the claim and cite some of the important claim limitations that are not present in the alleged abstract idea, and explain the significance of these claim limitations in terms of the technological problem and technological solution.

Intellectual property is distinguished from “real property” because the property itself exists in our heads and needs to be “created” through a process of description and examination. If approved and granted, your property is described in a proxy form such as a patent, copyright registration, or trademark registration. There is no livery of seisin ceremony. You cannot walk the property line of your patent or plant a garden in your copyright registration. To get a patent, you have to create.

“I think at the end of the day, patents are either valid or invalid as a legal instrument and therefore it’s not very helpful to talk about quality or ‘good’ or ‘bad,” Judge Michel said. “They’re either valid or not valid and with respect to someone practicing the technology, the patent is either infringed as properly construed or it is not infringed.”

In an article published on April 23, 2017, Gene Quinn wrote about President Trump’s workforce reduction plan and his proposal for what it should mean for the United States Patent and Trademark Office. I agree with many of those proposals for reducing the size of the USPTO in accordance with the mandate set forth by President Trump, but believe that concentrating on a reduction in the number of patent examiners is not the only or necessarily the best approach… Review of USPTO middle and upper level management to determine who assigns junior, senior, primary and supervisory patent examiners to specific art units and reassignment of Office personnel is necessary.

This data set shows that Oral Hearings are rarely conducted. (See Figure 1.) Across the 72,443 appeals, only 459 (0.63%) appeals had an Oral Hearing… As shown in Figure 4, Oral Hearings were associated with more full-rejection reversals (blue bars). Specifically, the full reversals accounted for 40.3% of the appeals with Oral Hearings, as compared to 32.5% of the appeals without Oral Hearings.

In pursuing President Trump’s federal workforce reduction plan the USPTO must target those patent examiners who have long been refusing to do their jobs. Losing these patent examiners to a workforce reduction will cut the “dead weight” from the Office without the Office losing productivity… And another thing that USPTO must do is this: Hire only those fluent in English to be patent examiners. As crazy as it sounds, patent examiners are hired by the USPTO who struggle mightily with the English language. It boggles the mind how a patent examiner who will be required to correspond in writing and speak verbally with applicants and their representatives can be employed for a position when they are not fluent in English, which is the official language of the Office.

Unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the rejection is called a final rejection all hope is not lost and there are things that can be done to continue to attempt to persuade and ultimately convince the patent examiner you are entitled to a patent… Generally speaking, what you will want to do after you get a final rejection will not be the type of thing you will have the right to do. In that likely situation, the most common thing to do is file what is called a Request for Continued Examination (RCE), which is allowed under 37 CFR 1.114. An applicant request continued examination of an application at any time after prosecution in the application is closed.

From all cases filed in the last 10 years, we filtered for all final dispositions in all of 2015 and 2016. Taking this data, we examine TC-2800 at three levels of detail: the overall statistics; a breakdown of the allowance rate by stage of prosecution; and finally, all the way down to the extremes of variation exhibited by individual examiners. The deepest investigation exposes a range of patterns unobserved in a focus on allowance rates alone. Relatively small changes in allowance rates, for example +/-15%, correlate to a 2x change in the effort and cost of an allowance.

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.

There is a plausible case that the US law on obviousness is indeed compatible with the EPO problem-and-solution approach. It could even be said that the steps of the problem-and-solution approach appear to have been inspired by US law and practice! Under present working styles, USPTO examiners concentrate on the claims and spend little or no time reading the description. If they are to initiate obviousness rejections using the problem-and-solution format they would have to change habits and consult the description to locate any effects related to the distinguishing features.

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.

It is almost impossible to believe this report is the work product of the Obama Administration. The section on patents, which begins on page 134, reads like a cross between a Monty Python skit and a Soviet era, propaganda laden news report. Perhaps the Obama Administration is trying to rewrite history and brainwash the entire industry into believing that President Obama has been a tremendous defender of the U.S. patent system. Simply stated, the Obama Administration can write all they want about the importance of the patent system and how patents are critically important for innovation, but the reality is that the future of American innovation has been forfeited (or at least heavily mortgaged) by a calculated, intentional, and willful dismantling of the U.S. patent system for the benefit a handful of politically well connected companies that helped President Obama get elected and then re-elected.

Hands on exercises were part of the program. In reading and understanding a patent application, materials were provided how examiners learn to break down an application in order to prepare to conduct a search. Work sheets and a sample problem of a mechanical device (a tortilla making machine) application with prior art references were provided to the attendees so they could do a disclosure analysis, determine any §112(f) issues, create a claim diagram, create a claim tree and ascertain if there are any other §§112 and/or 101 grounds of rejection. Another exercise was claim mapping using the same sample problem and additional prior art using PTO forms to formulate allowances and rejections. After the exercises were completed, there was discussion of what was learned and how there are many different ways to reach a conclusion.