John Doll has wasted no time moving forward to try and put his stamp on the United States Patent Office. One week ago today Doll, who became Acting Undersecretary of Commerce for Intellectual Property and Acting Director of the United States Patent & Trademark Office when Jon Dudas resigned, announced in the Federal Register that the USPTO will hold a roundtable discussion regarding deferred examination. The ostensible reason for this roundtable discussion is to obtain public input to help the Patent Office determine whether the support expressed in some corners for deferral of examination is isolated or whether there is general support in the patent community and/or the public sector generally for the adoption of some type of deferral of examination. Of course, those of us familiar with how the Patent Office runs know that John Doll is not at all interested in understanding what the patent community wants. He has already decided to try and push through deferred examination despite the fact that President Obama’s Chief of Staff Rahm Emanuel circulated a memo requesting that all regulatory activity by Bush Administration Officials be kept to only what is absolutely necessary.
Admittedly, the Rahm Emanuel memo specifically related to the fact that President Obama does not want any proposed or final rules to be published in the Federal Register without his appointees have reviewed the rules to see whether the Obama Administration wants to pursue such regulation. So technically John Doll moving forward with respect to deferred examination is not violating a direct order from President Obama, but what is the point in pursuing any regulation or investigating any regulation at this point when Obama has not even appointed a Secretary of Commerce, although speculation seems to suggest that he will soon appoint John Thompson, the CEO of Symantec (NASDAQ:SYMC).
Anyone who has been following the United States Patent and Trademark Office over the last several years knows that John Doll is largely responsible for most, if not all, of the bad ideas and ill fate regulation attempted by former USPTO Director Jon Dudas. Dudas looked to Doll for recommendations and advice on a routine basis, and now Doll is the one in charge of the Patent Office, which is indeed extremely scary. Doll has not been appointed by President Obama, and his new boss has not even been selected and confirmed by the Senate. Nevertheless, Doll is setting out to investigate and ultimately prepare a new rules package. This nonsense has to stop!
The poll questions that I write for the Practising Law Institute are not scientific by any means, but for a little more than a week I have had a poll question up on the Patent Practice Center asking whether the ascension of John Doll is a good thing. The question specifically asks:
Do you think it is good that John Doll has become acting Director of the USPTO?
So far 100% of the respondents have voted NO, that it is not a good thing that John Doll has become the acting Director of the USPTO. Not a single vote in Doll’s favor has been registered, which is amazing if you ask me.
There is tremendous animosity between the Patent Bar and John Doll. I do not personally know the man, but everyone I have spoken to in the patent industry blames John Doll for all the problems that are facing the US patent system. I don’t know whether he is at fault for all of the problems, but he is certainly to blame for a good number of the problems no doubt. The perception is that John Doll does whatever he wants and doesn’t care about what patent attorneys think, or what the needs and desires are of those who use the patent system. So I can just about guarantee that the perception of this latest announcement will be met in the industry with tremendous laughter and even more skepticism. No one is ever going to believe that a John Doll run Patent Office is holding a roundtable discussion to find out what the patent community thinks or supports. The mode of operation at the Patent Office for years has been to request comments and then simply ignore each and every comment received. That does not inspire cooperation or confidence in the process.
In any event, if anyone is so inclined to participate in this roundtable event, it is open to the public, at least sort of open to the public at least. Members of the public who wish to participate in the roundtable must do so by request, as the number of participants in the roundtable is limited to ensure that all who are speaking will have a meaningful chance to do so. Members of the public who wish solely to observe need not submit a request. If you are not selected to participate in the roundtable you can still submit written comments on issues raised at the roundtable or on any issue pertaining to deferral of examination. I would not anticipate any written comments to be taken very seriously though. Sadly, seriously considering comments is just not the Patent Office style over the last few years.
The roundtable will be held in at the USPTO, in the Madison Auditorium on the concourse level of the Madison Building, which is located at 600 Dulany Street, Alexandria, Virginia. Requests to participate at the roundtable are required and must be submitted by electronic mail message through the Internet to [email protected]. Requests to participate at the roundtable should indicate the following information: (1) the name of the person desiring to participate and his or her contact information (telephone number and electronic mail address); and (2) the organization(s) he or she represents. Written comments should be sent by electronic mail message over the Internet addressed to [email protected]. Comments may also be submitted by mail addressed to: Mail Stop Comments- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Robert W. Bahr. Although comments may be submitted by mail, the USPTO prefers to receive comments via the Internet.
The USPTO plans to make the roundtable available via Web cast. Web cast information will be available on the USPTO’s Internet Web site before the roundtable. The written comments and list of the roundtable participants and their associations will be posted on the USPTO’s Internet Web site.
About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
B.S. in Electrical Engineering, Rutgers University
Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide
Join the Discussion
9 comments so far.
Ron KatznelsonFebruary 6, 2009 12:53 pm
I am glad we established that your objections to USPTO’s potential promulgation of EOR rules is not predicated on principles or the merits of any particular EOR system, but only on fear regarding the process and its potential end results. I agree with you that thoughtful reform is required.
But I am encouraged by the apparent change of conduct here. Prior USPTO processes proposed internally cooked rules by fiat without any antecedent public inquiry as to premises or the broader structural framework upon which they should be constructed. In contrast, here we have an effort of initial public input solicitation specifically directed at EOR alternatives, before any cooked-up framework or a specific choice for a proposed rule is made. I hope that following this Roundtable and its related public comments, the USPTO would issue a detailed Notice of Inquiry, (NOI), detailing several specific EOR alternatives that it is considering. The NOI should contain all the relevant statistical data that bear on application processing and drop-out rates so that meaningful comments and analysis can be obtained from the public. The NOI should seek public comments on specific aspects of each alternative. A Notice of Proposed Rule Making (NPRM) should be published thereafter, with USPTO’s responses to the NOI comments and an analysis of the single alternative selected by the USPTO for promulgation. The NPRM should more narrowly solicit public comments on the proposed rule and final (minor) modifications based on such comments may be made in a final rule notice. This process would ensure that the proposed rule would be based on alternatives vetted in public and that the final rule would be a closer logical outgrowth of the proposed rule. This full process was clearly lacking in the enjoined Continuations and Claims Rules.
John Doll is now entitled to the benefit of doubt. Let’s give the USPTO an opportunity to show that it is embarking on a new path and that our fears are unjustified.
Gene QuinnFebruary 5, 2009 05:35 pm
I would agree that a reasonable and well-crafted EOR system would be workable. I guess where I think it falls apart is in the assumption that the USPTO will be interested in crafting a reasonable EOR. Do you really think that given what has been coming out of the Patent Office over the last few years suggests that they will create an EOR that would make any sense?
In the face of well over 300 unique and thoughtful comments on the claims and continuations rules the USPTO rejected all input and just did what they wanted anyway. It seems to me that the USPTO is far more interested in lessening their own work, reducing the number of patents and not at all interested in customer service, listening to the needs of stakeholders and reforming the system in a real way. Bureaucratic reform is not what is needed. Thoughtful reform is required.
Ron KatznelsonFebruary 5, 2009 04:22 pm
Thank you for responding to my comment and getting into the substantive debate on Deferred Examination. It appears, however, that we may be talking about two different systems, and that the misleading term “Deferred Examination” may be part of the problem. First, as I indicated above, I do not use this term because to some, it may mean that applicants cannot elect to have their application examined without further delay. Rather, I use the term Examination-On-Request (“EOR”) to describe the proposed system, as it permits any applicant to file a patent application accompanied by a concurrent Request For Examination, if they choose to go along the current process of automatic examination. This EOR system would essentially be equivalent to a deferral of examination under current 37 C.F.R. § 1.103(d) for 3 years, except that no petition and no fee would be required for deferral. This removes the cost and uncertainty as to whether the USPTO would grant a deferral, because deferral for 3 years would be the default under the EOR system (except that secret applications under §122 election would not be eligible for deferral). Moreover, the examination fee would not be due until (and if) a Request For Examination is filed.
You say: “Deferred Examination is just a bad idea that is going to cripple the patent system, and therefore, a bad idea”. You question how eliminating 10% to 40% of the examination workload “is a good thing”. You then say: “If you take away 10% to 40% of applications then you are going to be taking away 10% to 40% of the PTO [renewal fees]. Does that sound like a good idea? I mean, is a 10% to 40% cut off the top without regard to those inventions or impact wise? Of course not.”
First, the savings of 10% to 40% I was talking about were savings on *obsolete* claims that the *applicant* (not the USPTO) decides to abandon voluntarily. Those patent claims, if allowed, would bring no renewal fees because the patents would be dropped before the payment of issue fees or before the 4-year renewal point. Thus, the loss of the related back-end fees is already incurred today with respect to these applications and no further loss would occur. Second, this cut in examination workload would *not* be “without regard to those inventions” because the *applicants* (not the USPTO) would determine which claims or inventions they want to keep (and request examination thereof).
You say: “how does a 10% to 40% cut in examinations forward the constitutional purpose of the patent system? What this will do is drive much innovation into the closet to be protected by trade secrets, which is not a good idea.”
We all agree that “driving innovation into the closet to be protected by trade secrets” is not only a bad idea, but is in direct contradiction to the constitutional directive to “promote the progress of science and the useful arts.” However, deferral of examination and avoiding examining obsolete claims would do nothing of the kind. Applicants’ substantive rights for examination and issuance of claims on any invention they deem worthy of patenting is in no way encroached upon by the EOR system. They can also opt out of deferral. Clearly, the patent bargain would not be disturbed even infinitesimally. Hence, no incentives to keep inventions as trade secrets would be created beyond those that exist under the present system. Moreover, because deferral would only apply to applications that are slated for publication 18 months from their priority date, the disclosures associated with the 10% to %40 deferred and abandoned claims would be in the public domain and would not remain in any “closet.”
Finally, you say: “If you give this PTO Deferred Examination, what they are going to do is simply string out prosecution longer and longer so that when it is your turn to get an examination the technology no longer has relevance”. This claim lacks any basis. In fact, the exact opposite would occur under an EOR system. Applicants can always opt out of deferral by simply filing a Request For Examination upon filing their applications and retain their place in the examination queue. Importantly, you should recognize that every deferred application removed from the current examination queue causes another application to move out of turn *ahead* in the examination queue, resulting in substantial reduction of pendency for non-deferred applications. After all, the EOR system would not be a USPTO examination holiday. This pendency benefit to those who wish earlier patent protection does not exist under the current system.
In conclusion, upon examining these details, you would have to agree that a reasonable and well-crafted EOR system would properly address all of your concerns.
Gene QuinnFebruary 5, 2009 11:12 am
I certainly respect your opinion, but I think you are very wrong about Doll. Everyone that I speak to tells me the same thing about John Doll. While I do not know him personally, what I have heard from those in the know is that it was indeed him leading the charge and that Dudas deferred to him on many of the rules packages. In essence, Dudas was listening to only one voice, and that voice was John Doll.
With respect to Deferred Examination, I have not yet opined that it is a bad idea, but I will be doing that soon enough. The madness I was referring to in the article was the complete disregard for process and the rule of law. Doll knows what he wants to do and is setting out to do it even though President Obama has cautioned heads of agencies to stand down. Nevertheless, Deferred Examination is just a bad idea that is going to cripple the patent system, and therefore, a bad idea.
“From experience of other patent offices, 10% to 40% of applications are never examined under EOR systems, resulting in substantial patent office workload reduction.”
How is that a good thing? It simply is not. Do y ou realize that 70% of the Patent Office budget on an annual basis comes from maintenance fees? If you take away 10% to 40% of applications then you are going to be taking away 10% to 40% of the PTO budget. Does that sound like a good idea? I mean, is a 10% to 40% cut off the top without regard to those inventions or impact wise? Of course not.
Also, how does a 10% to 40% cut in examinations forward the constitutional purpose of the patent system? What this will do is drive much innovation into the closet to be protected by trade secrets, which is not a good idea.
Additionally, we all know that for years the Patent Office has played games. Examiners don’t examine, examiners force continuations and RCEs to help them meet their quota, the Patent Office spends less time looking for errors and proclaims increased quality. If you give this PTO Deferred Examination what they are going to do is simply string out prosecution longer and longer so that when it is your turn to get an examination the technology no longer has relevance. Soviet era quality and reform is not a good idea. Allowing the agency to string out examination and render innovations useless (as is currently done without Deferred Examination) will be a disaster.
What we need is a functional Patent Office that does its job today, not 44 months from today!
katznelsonFebruary 4, 2009 10:20 pm
I disagree with your pronouncement regarding John Doll’s move to explore Deferred Examination. You say:
“John Doll is largely responsible for most, if not all, of the bad ideas and ill fate regulation attempted by former USPTO Director Jon Dudas”. … “Doll is setting out to investigate and ultimately prepare a new rules package [for Deferred Examination]. This nonsense has to stop!”
As you know, I strongly disagree (and have expressed so publicly) with essentially all the recent rules’ packages that came out of the USPTO under Jon Dudas. Whether we liked Doll’s contributions to these misguided and ill-fated rules’ packages or not, John Doll is not Jon Dudas and we must judge Doll based on the *substance* of his actions in his new (temporary) position of responsibility. Unfortunately, none of your comments or those of your readers addressed the substance of Deferred Examination. Please judge the message – not the messenger.
John Doll knows that he now presides over a patent office with unprecedented runaway backlogs and a pendency crisis. Examination workload far exceeds the available resources and it does not look like things would improve any time soon. Any delay in implementing constructive and thoughtful solutions would only worsen the problem. What do you expect Doll to do until his replacement takes over?
Exploration of an Examination-On-Request (“EOR”) system makes a lot of sense and it should have been done years ago. I use this term rather than “Deferred Examination” because any reasonable proposal would not call for deferring examination per se. It would provide for EOR, within a set period. Thus, not all applications would be deferred, as it is expected that about one third of patent applications would be filed with a concurrent request for examination. Other countries employ this system, under which applications are not examined automatically, as in the U.S., but only upon a specific Request For Examination within a set time-period, say 3 years. If no request is filed within that period, the application is deemed abandoned and is never examined. From experience of other patent offices, 10% to 40% of applications are never examined under EOR systems, resulting in substantial patent office workload reduction. This is due to applicants’ voluntary abandonment of obsolete claims prior to the Request For Examination deadline. This is a way to meaningfully reduce examination workload without undermining patentees’ substantive statutory rights to file any number of claims and continuations. Under current USPTO practice, applications that become obsolete, but receive examination by the USPTO, are the worst investment the USPTO can make because their obsolescence means that the patents are unlikely to fetch any renewal fees.
In an EOR likely to be considered in the U.S., any third party may trigger examination after publication of the application. This will prevent a patentee from holding off prosecution of a patent that others find problematic and in need of early patentability resolution. Furthermore, applications under Section 122 secrecy election would most likely not be eligible for deferral.
EOR can be implemented retroactively for all applications in the USPTO backlog that have not received first office action on the merits. In workflow calculations I have made for an upcoming paper on EOR, I show that the combined effect on workload would halt the pendency rise.
I have yet to see a well-reasoned analysis by those who oppose EOR that supports their position. John Doll’s initiative to begin a public discussion on EOR and build a PUBLIC record upon which the USPTO *may* initiate a proposed rulemaking proceeding, is long overdue. It should be welcomed – not blindly rejected. The benefit of doubt must be accorded. Please judge John Doll by the SUBSTANCE of his actions today – not by what he might have supported under the policies of Jon Dudas.
EGFebruary 2, 2009 04:57 pm
I’m BACK! Doll is definitely NOT the force for change. In my view, deferred examination would be a good idea, but Doll pushing it will almost certainly sink it, along with any other Rules packages he proposes. The patent bar was brutalized while Dudas was heading the PTO, and nothing changes with Doll. A clean sweep of the PTO hierarchy is needed before we can move forward on any new Rules packages.
breadcrumbsFebruary 1, 2009 03:10 pm
I do hope that PLI is able to restore the blogs and comments to you. There were several strings of discussion that were very informative. Notably, my dialouge with PoIR, as I do not know if PoIR has had difficulty digesting my grading of his response to my challenge (grades were D and F). I did track some posts on Groklaw attributed to PoIR in early January that misrepresented my information to him. Not surprising, the posts on Groklaw badly missed the legal points and simply reinforced the concept that the software-anti-patent posters were incapable of understanding anything but their own agenda.
I look forward to more reasoned dialogue that prompted my challenge for PoIR and a response from him (her) in the same manner for which the challenge and the severe grading were undertaken.
It does seem odd that at a time of such debate in the law, that a forum such as yours that generates (mostly) congenial dialougue on the order of hundreds of posts would not be seen as much value by PLI. They are still involved in patent law, no?
You might also inquire with a software toolbar called patentpal that lists the link to PLI – that link still has PLI (prior to the break) and should list the IPwatchdog link directly.
Gene QuinnJanuary 29, 2009 10:18 pm
Thanks for your comment and thanks for reading.
I know that forcing people to register is a pain, but unfortunately a necessity. As it is I get all kinds of disgusting and embarrassing/disgusting commercial spam comments about this and that with links to products and such. One way to eliminate that is to allow comments only by those who have registered. Once you have an approved comment you should be good to go. I realize that will cut down on the dialogue, but I am not able to sit and moderate the 100 spam comments for the 1 legit comment. I would get nothing done.
As for the PLI blog, they really didn’t see much value in terms of the traffic. So I arranged a deal with them to let me publish things to my site and then just promote them through website advertising on the blog and on my patent bar exam pages. It is unfortunate that they didn’t see the value in 24,000 visits in a day (when I wrote about Bilski). I do see the value in the traffic and it has been growing and wonderful. I suppose it is a win-win for me, and at least PLI gets advertising. I didn’t realize they were going to take down all the old posts I wrote over the past 2 years though. That was a shock.
patent leatherJanuary 29, 2009 09:20 pm
Great article, anything Doll touches really goes sour. Although perhaps he learned his lesson and realizes now that he should listen to, not ignore, the comments of the patent bar? I have friends at the Office and they are just as unhappy with him as the attorneys are. If they allow a case, they face getting in trouble so they admittedly write bogus rejections. As Obama says, time for a change!
What happened to the blog link from PLI? Also, no offense, but having to register now to post is a pain and will probably deter posters.