Posts Tagged: "patent examiners"

Of course, it will be most useful for patent examiners to review and truly internalize the guidelines, but there is some excellent language here that is quite practitioner and applicant friendly. There is explanation of situations where a rejection should be given, but more importantly from a practitioner standpoint will be those examples and illustrations of when a rejection is not appropriate. The discussions of what an appropriate Office Action should include will no doubt be particularly useful as well as practitioners try and hold examiners feet to the fire to provide the type of information required in order to truly appreciate any problems identified by the examiner and how to appropriately respond. Indeed, it is my guess that patent practitioners will be yelling “AMEN” from the top of their lungs as they read various portions of the Guidelines.

Specifically, we learned that the USPTO projects an average first action pendency of 23 months by the end of fiscal 2011, that participating in the First Action Interview Pilot Program more than doubles the likelihood of getting a first action allowance, that Track 1 rules are imminent with rules for Tracks 2 and 3 to follow and during FY 2010 nearly 6,000 USPTO employees worked from home at least a portion of their work week. We also heard an ominous and declarative statement from Kappos, who told the House Subcommittee on Intellectual Property that the diversion of fees will cause the patent backlog to rise.

I believe it is time for the PTO to jump aboard the ship of the future and use document and data search techniques now being employed in the litigation and national security arenas. Many tools (software approaches) exist that multiply effort and get smarter with each go around. I believe these tools should have a place at the PTO. Search techniques that build on what others have done and that search not just publications, but file histories as well, would give examiners a leg up when trying to assess patentability and truly understand what references can and should be cited to demonstrate. Machine translation of foreign language art would also be very useful. The abstracts just do not provide enough for an Examiner to go on for foreign references. And, in many areas, foreign art is the best.

Some patent applications are difficult to get agreement on. The examiner won’t allow and the applicant won’t abandon. The net result is that office actions and responses go back and forth with no apparent resolution in sight. We propose that progress with these difficult patent applications can be tracked by looking at two separate but interrelated metrics, “applicant effectiveness” and “examiner effectiveness”. These two metrics can then be used to diagnose and correct problems in patent prosecution and examination.

Commerce Secretary Gary Locke announced that the first Regional Patent Office would be located in Detroit, Michigan and will open at some point during 2011, employing some 100 patent examiners with some additional support staff. Locke explained that as a part of the nationwide workforce initiative of the Obama Administration high paying jobs would be coming to the USPTO Detroit Satellite Office. Locke said that while 100 patent examiners is an appropriate level of staffing initially that number could expand over time if the Regional Patent Office model proves successful. Secretary Locke also explained that the Detroit Satellite Patent Office will be “the first of several Patent Offices we hope to establish around the country.” When pressed during the question and answer phase of the call, Secretary Locke said that perhaps two additional Satellite Patent Offices might open “within the year after Detroit.”

The initial Peer To Patent pilot program, which began in 2007, opened the patent examination process to public participation in the belief that such participation would accelerate the examination process and improve the quality of patents. Yesterday the United States Patent and Trademark Office announced a sequel to the initial pilot program and will begin a second Peer To Patent pilot program, again in coordination with New York Law School’s Center for Patent Innovations (CPI). This new Peer To Patent program will run for a one year term and will commence on October 25, 2010. This second Peer To Patent pilot program will expand on scope of the previous pilot program. You may recall that the first Peer To Patent pilot was limited to software and business methods applications, but this new pilot program will also include applications in the fields of biotechnology, bioinformatics, telecommunications and speech recognition.

In this second installment of my interview with current AIPLA Executive Director and former USPTO Director, Q. Todd Dickinson, we start out discussing pendency at the Patent Office. Dickinson tells me about the incentives he used to keep patent examiners as they matured into the level of experience where they are ready to really roll up their sleeves and become the work-horses that Office needs. We talk about the AIPLA position on the proposed Three Track Proposal now pending at the USPTO. We then moved into a very interesting discussion of patent reform, and a bombshell is dropped, at least in my opinion. I was surprised to hear Dickinson say that he does not think patent reform is dead for THIS legislative cycle. He says: “The clock’s running and, the plays have to be run a little faster,” but that he “can see a path forward once the Congress returns.” He goes on to point out that the American Inventors Protection Act was attached to an appropriations bill. Looking at what Congress has on its plate upon returning it looks like there are a lot of appropriations bills. Curious indeed!

In this interview we talk about how two Presidents that are extremely different on so many fronts, Presidents Reagan and Obama, are pursuing quite similar strategies regarding the Patent Office. We also talk about the importance of good working relations between patent examiners and the patent bar, the enormous backlog of applications at the Patent Office, the Patent Office process for handling decisions and issuing guidance in situations such as the recent Supreme Court decision in Bilski v. Kappos and what it is like to be Commissioner for Patents and the Director of the Patent and Trademark Office.

Who knows what will happen, but this early announcement form the USPTO seems helpful. They recognize that business methods are patentable unless they represent abstract ideas, as Bilski was determined to encompass. It is also recognized that satisfying the machine-or-transformation test is heavy evidence of satisfying the requirements of 101, and an interim process is put in place whereby the burden will be shifted to the applicant to demonstrate that the claimed invention is not simply drawn to an abstract idea if a machine-or-transformation rejection is given.

Management at the United States Patent and Trademark Office has been working with representatives of the patent examiners union, the Patent Office Professional Association (POPA), to better align the performance standards for patent examiners with the USPTO’s goals for increasing quality in patent examination and reducing the backlog of pending patent applications, Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos announced today. If adopted, the joint task force’s changes would be the first major revision to the patent examiners’ performance appraisal plan (PAP) since 1986.

On Friday, May 28, 2010, USPTO Director David Kappos gave five suggestions for practitioners on the Director’s Forum (i.e., the Kappos blog). It would be wonderful if such things could occur in the prosecution of every case, but unfortunately the Federal Circuit has effectively prevented that from happening and forced upon the USPTO and the practicing patent bar a game of hide the ball, which benefits no one. With Congress not stepping up to the plate any time soon to do anything useful for the patent system there may be only one hope left; namely to get the CAFC judges to examine patent applications, sitting by designation, so they can better understand the mess they have created.

The new count system seems to place emphasis on complete and thorough initial examination, and even provides incentive for examiners to issue patent applications early in the process. Examiners are also given up to 1 hour of non-examination time to initiate an interview with the applicant or the applicant’s representative, and to write up an interview summary. Given that patent examiners will receive more credit under the new count system for disposals without need for a Final Rejection, it seems reasonable to anticipate that when there is allowable subject matter present in an application at least some examiners will find it in their own best interest to work with an applicant to get a patent issued quickly.

The United States Patent and Trademark Office wants YOU, at least if you are  an intellectual property professional willing to apply for a rewarding and challenging position as a US patent examiner.  Yes, the USPTO is once again hiring patent examiners, at least in a targeted way (whatever that means) as part of an initiative to help reduce the application…

EDITORIAL NOTE: What follows is a portion of a longer essay by Ron Katznelson, which contains more information including statistical data on the work of the U.S. Patent Office. It is published first here as an article with the permission of Dr. Katznelson. When asked what wishes pertaining to patents I have for the New Year, I began thinking about…

Christmas is coming early for inventors, innovative companies, patent attorneys and anyone in the technology/innovation industry that relies upon patent protection. Faced with a growing backlog and long patent pendency periods in a difficult fiscal environment, the United States Patent and Trademark Office (USPTO) is reaching out to former patent examiners, inviting them to return to the agency.  According to…