Posts Tagged: "patent examiners"

Biased Report Chastises USPTO for Insufficient Quality Control

A fair treatment of the issue of patent quality would have necessarily considered those applicants that were wrongfully denied, as well as the extraordinary wait one must endure on appeal to the Patent Trial and Appeal Board to rectify examiner mistakes. Anything short of a fair and even-handed inquiry is not only inappropriate, but seems intended to lead to a conclusion that supports a preordained narrative. Sadly, this preordained narrative fits perfectly into the view of one side of the patent reform debate. With Congress considering patent reform in both the House and Senate the timing on the release of this one-sided report seems hardly coincidental.

The Unforeseen Impact of Alice

The fact is, patent examiners are struggling with the application of 35 USC 101 in light of the Alice decision just as much as everyone else. Greater uncertainty among both patent applicants and patent examiners surely increases the likelihood of disagreement between them. Thus, the Alice decision will not just increase the number of rejections under 35 USC 101, but is also likely to result in more rebuttals by applicants and more appeals of examiner decisions. A loss in patent examination efficiency, even if small, will act as a headwind against further reductions in patent pendency.

Post-Alice, Allowances are a Rare Sighting in Business-Method Art Units

Since the Alice Corp. decision, rejections under 35 U.S.C. 101 have become substantially more common in business-method art units, and notices of allowance have become substantially more rare in these art units. Meanwhile, 101 rejections made even pre-Alice were amongst the poorest quality for business-method art units as compared to those from other computer-oriented art units. Thus, it appears as though the patent prospects for applications assigned to business-method art units are grim. Given that the United States has traditionally been a leader in software and that software applications are frequently assigned to business-method art units, it seems unfortunate that the patent office is so unwilling to grant protection to innovation in this area.

High Value Patents – Where Strength Meets Quality

The terms patent strength and patent quality get used frequently within the industry, but what do they really mean? To a large extent the meaning of the terms depends on your viewpoint. The United States Patent and Trademark Office has historically employed a variety of quality metrics, but is a patent that is considered high quality from the perspective of the USPTO a strong patent, or a patent that the industry would view as a high quality patent, or one that would be viewed to be a valuable patent?

USPTO Retention Efforts – Tuition Reimbursement Returns but No Loan Repyament

Paying for tuition is an excellent way to keep dedicated, talented employees while they continue to obtain training that will help them fulfill their duties at the USPTO. But a question of fairness jumps to mind. What about all the employees who paid for their own education during the time when the tuition reimbursement program was shelved? It seems a little unfair, and unwise, to pay for the tuition of new students but to do nothing about those employees who continue to work for the Office and who paid for their own courses and degrees. This is particularly true where other agencies do provide loan repayment to keep employees.

Examiners Begin Issuing Alice Rejections for Software

He says he has seen the below form paragraph twice within a week. Most alarming, in one case the form paragraph came in the form of a supplemental office action, but the original office action, which was outstanding, didn’t have any patent eligibility rejections under 35 U.S.C. 101… Clearly this form paragraph does not come from the initial guidance the USPTO sent to examiners. In that initial guidance Deputy Commissioner for Patent Examination Policy, Andrew Hirshfeld, told patent examiners that “the basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” Therefore, USPTO told patent examiners that while the framework of the analysis had changed the substance of the analysis had not changed.

Sideways and Backwards: A Broken Patent Process

When reading patents it is not at all unusual for a patent to be issued a number of years after the original patent application was filed, but it isn’t every day that you see a patent issue more than 12 years after it was originally filed. Yet, that was exactly what happened with respect to the ‘327 patent application to HP. Worse yet, after HP successfully prevailed on claims in an appeal to the Board the case goes back to an examiner who for the first time raises a rejection never before made, while still continuing to make additional obviousness rejections. In short, this reads like the story of an application that examiners never wanted to issue in the first place… What if this applicant were a small business or individual? Had this applicant not been HP and instead a small company, would any patent be obtained despite the fact that the Board twice reviewed the claims and twice disagreed with the patent examiner? Of course not. Had this application been filed by an individual or entity with few resources the application would have been abandoned. Buried by a patent process that couldn’t care enough to administer justice in any kind of a timely fashion. That is rather pathetic. Getting a patent issued should not have taken 12 years, and resolving the application should not have taken more than 5 years after the first appeal was successful!

Examiner Statistics: Insight into Prosecution Strategies

There is no way to know for sure whether the applicant could have achieved an allowance had they hung in, but it would have been helpful to know that the examiner was very experienced and likely had decision making authority. Such an observation would have given great insight into the fact that the examiner in question here has an overall allowance rate of nearly 70%. It no doubt would have also been helpful to know that after an interview in over 50% of cases, the next significant event following the interview was an allowance. In short, the statistical data shows that this was an experienced patent examiner who is interested in working with applicants and their representatives to identify allowable subject matter and issue patents where appropriate.

USPTO Modifies After Final Amendment Pilot Program

Last week the United States Patent and Trademark Office (USPTO) announced in the Federal Register that it would modified the After Final Consideration Pilot Program (AFCP) to create the After Final Consideration Pilot Program 2.0 (AFCP 2.0). The goal of AFCP 2.0 is much the same as it was when the USPTO initially introduced the precursor AFCP. According to the USPTO, the goal of AFCP 2.0 is to reduce pendency by reducing the number of RCEs and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application. There are, however, three differences between old and new AFCP.

Patent Statistics and SPEs: Looking Beyond PAIR Data

I wrote something incorrect about SPE Len Tran and for that I apologize to him and to the USPTO and to readers who were lead astray. The fact is that if you do a simple Google patent search you will see that since the time he became a SPE in 2008 he has signed many hundreds of patents. SPE Len Tran is not an examiner or SPE that refuses to issue patents. To the contrary, he has issued many patents for a variety of different technologies and seems to be an example of a good supervisor.

Patent Attorney Asks Examiner “Are you drunk?”

Are you drunk? No, seriously… are you drinking scotch and whiskey with a side of crack cocaine while you “examine” patent applications? (Heavy emphasis on the quotes.) Do you just mail merge rejection letters from your home? Is that what taxpayers are getting in exchange for your services? Have you even read the patent application? I’m curious. Because you either haven’t read the patent application or are… (I don’t want to say the “R” word) “Special.”

PatentCore Joins Forces with LexisNexis® on PatentAdvisor™

Reed Technology and Information Services Inc., a part of the LexisNexis® family and a provider of content management services, announced earlier today that it has joined forces with PatentCore. You may recall that PatentCore is a publisher of online Patent Office analytics, which for the first time has given the patent bar and public a snapshot look at what goes on inside the Patent Office Art Unit by Art Unit and patent examiner by patent examiner.

Bob Stoll Part 2 – Innovation, Economy, Patent Examination

In part 1 of my interview with Stoll we discussed his adjusting to life in the private sector, the fact that he doesn’t enjoy the billable hour part of private practice (just like every other attorney I know) and we discussed politics a bit, as well as the U.S. economy and innovation policy. Part 2 of my interview, which appears below, picks up where we left off discussing Presidential politics and the buzz that engulfs D.C. every 4 years. We then move on to talk about how innovation drives the U.S. economy and I get his thoughts on why we haven’t seen a great new technology that has spawned an entirely new industry as we have coming out of so many recessions in the past. We then finish part 2 discussing changes to the patent examination process and how to streamline the examination process.

KSR the 5th Anniversary: One Supremely Obvious Mess

On Monday, April 30, 2007, the United States Supreme Court issued its final decision in the matter of KSR v. Teleflex, which overruled the Federal Circuit’s application of the so-called “teaching, suggestion, motivation” test (or simply TSM) as it applies to determining whether an invention is obvious. At least for the last generation (and likely longer) no other Supreme Court case in the patent arena has been nearly as influential as the Court’s decision in KSR v. Teleflex. This is because obviousness is where the rubber meets the road for the patentability of inventions. This 5th Anniversary of the ruling provides an opportunity to revisit the decision and where we have come since. This will be a recurring theme this week on IPWatchdog.com as we look at the law of obviousness in the wake of this infamous decision.

Confessions of the Borat Applying Patent Examiner

Yes, it was I. The former Borat applying patent examiner turned law student. See Prior Borat: Non-traditional Prior Art Rejections! If nothing other than offering comic relief, the now infamous Borat patent rejection has hopefully illustrated at least one fundamental truth to the inventor and patent practitioner alike – don’t forget to do a thorough search of non-patent literature. I won’t bore you with citations from the MPEP. We all know what the Manual says. Instead I will attempt to provide some general insights into the examination process.

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