I've noticed a few stories over the last few months about what some might call 'trolls'. Basically, stories about people who seem to be trying to abuse the intellectual property system.

Doubtless there are many other stories like these running around the net.

I thought the stories made for some interesting reading.



http://www.reallivepreacher.com/node/186

http://www.audioholics.com/news/industry-news/blue-jeans-strikes-back

http://accrispin.blogspot.com/2008/03/victoria-strauss-copyright-scam-us.html

It's nice to make a difference.

In general, if you know that the job that you do is important and makes a real difference, I would think that would make it easier to be self motivated to do the best job possible.

Back when new examiners at the Office went through only a two-week training course (Patent Examiner Initial Training) before being set loose to examine new applications, there really wasn't much, if any, time devoted to instilling in examiners an appreciation for the importance of the job they were going to be doing (to my recollection, anyway).

It took me a long time to really gain a full appreciation for the impact that the job patent examiner makes on businesses, inventors and the economy in general. As I came to that realization, I wanted to do a better and better job of examination (within, of course, the production requirements that the Office imposes).

I've always had the impression that many examiners see patent examining as just another job. This really was very understandable, given that two weeks worth of training, especially when so many new examiners are straight out of school. I doubt that many new examiners have spent their time as patent-junkies before coming to the Office.

But patent examination isn't just another job, and it's important that it doesn't get treated like one.


For a long time, I never noticed any significant effort made on the part of the Office to help examiners to gain that appreciation for the impact that their job has, but that as definitely changed over the last few years.

The Office now puts their new examiners through 8 months of initial training, and although I don't have any firsthand knowledge of the exact curriculum being taught, I assume that there's some time devoted to giving the students an appreciation for the importance and impact the the job has on society.

The Patent and Trademark Office Society has begun organizing trips to the courthouse (even the Supreme Court for KSR!) to attend hearings on important patent cases.

The Office has also started putting links to stories in the media about the PTO and patent issues into the weekly newsletter. The introduction:

"Welcome to "USPTO in the news", where you'll find the five major news stories from the previous week covering important news about our office, patents, trademarks, copyrights, and IP policy and enforcement. Please take a moment to read these stories -- you'll gain a greater understanding of the issues affecting the USPTO and become better informed about what the media and our stakeholders are saying about the USPTO."


In a recent issue, they linked to the following stories:

Managing Intellectual Property
"Federal Circuit seeks new patentability test in Bilski" - May 12, 2008

Information Week
"Patent Office Hosts Toy Design Competition for Students" - May 13, 2008

San Jose Mercury
"Get moving on patent reform measure stalled in Senate" - May 11, 2008

Intellectual Property Watch
Bush Administration Pushes On For Patent Reform Bill This Year" - May 16, 2008

Intellectual Property Watch
"Francis Gurry Of Australia Wins Election To Be Next WIPO Director General" - May 13, 2008


'The Weekly' has even posted their own story regarding the possible impact that the Bilski case might have. The introductory paragraph:

"Recently, the media has focused on the pending In re Bilski case in the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., which is an appeal from a decision by the United States Patent and Trademark Office USPTO). After a full-court hearing on May 8, many reporters and bloggers have speculated that this case will lead to the end of business method patents. To help USPTO Weekly readers get a better understanding about the Bilski appeal, the Weekly investigated the case."

The entire text of this story can be found at The Patent Prospector.


Self-motivation can go a long way to ensuring quality patent examination, and knowing you are doing something that matters goes a long way to getting one self-motivated. After all, everybody wants to feel like they make a difference.

The USPTO will host an on-site job fair from 9 a.m. to 3 p.m. on Saturday, June 14th, in the Madison Building Auditorium to recruit patent examiners for fiscal year 2008.

The USPTO's goal is to attract qualified applicants who have a bachelors or advanced degree in computer engineering, electrical engineering, mechanical engineering, biomedical engineering, chemical engineering, chemistry and physics. Applicants must also possess effective oral and written communication skills with the ability to succeed in a production environment.

Additionally, listed below is the schedule of upcoming regional job fairs:

June 6-7, Detroit, MI

June 13-14, Cleveland, OH

June 27-28, Durham, NC

To schedule an interview, interested applicants must register at www.usptocareers.gov/jobfair.

Nobody likes to make a mistake, for reasons that are fairly obvious.

When you're an examiner, making a mistake will usually cost you time, and probably counts. It also generally costs the applicant time and money.

When I first began examining, and found that I had made a mistake in an action, my first inclination was to apologize for it in the subsequent action.

Being new, though, I had no idea whether such a thing was appropriate, or a good idea.

So I asked around, and the general consensus was that you didn't want to apologize for a mistake in an action ['on the record'], because all that would do is call attention to the fact that you screwed something up. Better to just fix the mistake and leave it at that.

There were still times that I really thought that I should apologize, but I continued to follow the guidance I'd received as a new examiner.

There eventually did come a time (after I got partial signatory authority) that I decided that there really were mistakes for which the attorney (or more importantly, the applicant) deserved an apology. These days when that happens, I give one to them.

Most of those mistakes are fairly innocuous, like forgetting to include the initialed 1449 from an IDS with an action (although IDSs are getting tracked more closely these days, so it is harder for that to happen).

Mistakes can be more serious, though. There is one instance that I particularly remember. Without going into the details, I made a mistake that gave the attorney the impression that I was willing to allow a group of claims when that wasn't actually the case. When the amendment came back, the attorney had placed the claims in what they clearly expected to be condition for allowance.

While I was reviewing the amendment, I discovered my mistake.

I felt bad about it, but I didn't have any choice as to handling this situation. It's not like I could allow claims that were clearly (to me) non-patentable. I fixed the mistake, wrote up another rejection and mailed it out.


And I included an apology in the action.


There are other instances where I really would like to apologize, but I don't, because I don't think one is really warranted. One example of this is when I am doing a follow-up search and come across a really good piece of art that I think I should probably have found the first time around. But searching is a subjective art, and you're not always going to find the best art the first time around. Sometimes upon reflection you think of a searching strategy that hadn't occurred to you before. It happens.

Another instance where I get the urge to issue an apology has to do with 101 rejections. For a while, the guidance that we were receiving on the interpretation of 101 was, um, evolving.

I'd send out a 101 rejection, and by the time the amendment came back, the Office's position on 101 interpretation had changed. "Thanks for making those changes for me, but things have changed and now you'll have to do these other things to satisfy the requirements for statutory subject matter." Once again, I feel bad about it, but in this case I'm just following the guidance of the Office, who is just following the guidance of the courts (and I'm getting stuck writing a second non-final for it). It feels like I should include an apology with the action, but under those circumstances I don't think it's called for.

Luckily, 101 has settled down for the time being, so I'm not put in that position very often these days (although with the cases that are currently working their way through the courts, it's possible that will change again soon).


I can't ever remember seeing anything resembling an apology in correspondence from attorneys. That could be because all of the attorneys I deal with are true professionals and don't make mistakes.

It could also be that when an attorney makes a mistake, they probably owe that apology to their client, not to me.

In any event, it's not uncommon to see an applicant change attorneys over the course of prosecution, so certainly mistakes do get made. It only makes sense; nobody out there is perfect.

IP Australia and the Australian government have launched a new open, online database featuring almost 20 years' worth of the country's patent application records.

The Story

The Website

While it's always great to have additional sources to search, I don't see myself using it very often (except in those cases where I'm looking for a specific Australian patent document and am having problems finding it through IP Australia), because it simply takes too long to routinely perform yet another search on another database and to analyze the results of that search. In order for it to be truly useful as a searching resource to me, it would ideally be incorporated into EAST along with the EPO, JPO and Derwent documents that are already there.

Still, more is better, right? Well, I suppose so.

The process for submitting an employment application with the Office now has a bit more flexibility.

Effective March 31st, the USPTO accepts employment applications via the following methods:

• Online*
  
• E-mail*
  
• Fax*
  
• Mail or Overnight Mail
  
• Hand Delivery
  

This will no doubt be dissected on all of the patent blogs over the next few days. It will likely make for some interesting reading.

Patently-O


The Order

The Opinion


The end result is that things are back where they started (for now). Still a pendency problem.

The decision also raises a question: since the Office cannot implement the proposed rule changes, anybody got a productive suggestion for alternative plans that might help deal with the backlog?

There was a semi-interesting article in January's JPTOS about how one might go about addressing the pendency problems at the Office.

In short, the author proposed the following:

The USPTO should lessen quality criteria that require review of a primary examiner's office actions, because the resulting lower allowance rate necessarily increases pendency. Basically, the author's point is that (1) resources (examiners) are being diverted away from examining and to reviewing other examiner's actions, and (2) the reviews are slowing the rate of allowances and thus prolonging prosecution (and so increasing pendency).

I've got problems with this proposal. I don't know the exact number of examiners working in QA, but I'd be surprised if it is that significant (although I could be wrong). The author believes that pendency and quality are necessarily inversely related, which is true to a certain extent, but I hesitate to agree that it's a good idea to neglect one to benefit the other. The Office has always had to strike a balance between responding to critics who point out the shortcomings in the quality of examination and critics of the time it takes to get a patent issued.

Make changes, such as making law school tuition benefits available after only one year at the Office (instead of the current two years), that will help with examiner retention, since losing examiners exacerbates pendency problems.

Examiner retention would certainly go a long way towards helping with pendency. More senior examiners obviously produce more than newer examiners, so it is in everyone's interest to try to keep examiners around the Office long enough to become more senior examiners. There are probably more effective ways to address this problem than changing law school tuition benefits, though. For me, job satisfaction goes a long way, which means give me the tools and the time to do my job the way it should be done, and I'm happy.

Change the production system to encourage examiners to promptly process amendments by awarding examiners one-half count for the first amendment processed per balanced disposal, meaning that a balanced disposal would amount to 2.5 counts instead of the current 2.

I've never had a whole lot of problems motivating myself to do amendments, especially given the workflow implications of letting amendments slide. There has been talk around the blogs of basing production on actions per balanced disposal, which might be a step in the right direction. I personally think that perhaps actions per ultimate disposal (meaning either final abandonment, examiner's answer or patent issue) might work even better.

Make it easier for examiners to be promoted to a GS-15 examining position (as opposed to a management position). This would keep more examiners in high-production positions, instead of removing them from examining altogether.

Personally, I'm not sure how well this would work. Sure, it would be nice for examiners to have easier access to a GS-15 examining position. Currently, you need to fulfill some fairly specific requirements (some of which involve documenting graduate degree-level work) in order to attain a GS-15 examining position. If I remember correctly, there are three 'flavors' of GS-15 positions: generalist, expert, and a third which I don't remember off the top of my head. One of them allows the examiner to keep their current GS-14 production level, but the other two require even higher production.

Truthfully, I don't think it would be a worthwhile trade off for me. Production requirements are onerous enough where I am, and more money wouldn't make higher production requirements worth it.

Also, from the people I've spoken with, I believe that the path to SPE-dom is seen much more as an escape from the production system than it is a path to a GS-15 salary. It is unlikely (my opinion only) that easier attainment of a GS-15 examining position will be an attractive alternative to those primaries who are applying for SPE positions.

Change the current structure of art units to include 25-30 examiners each (instead of the current 10-20). The rationale here is that the current crop of new examiners are going through eight months of training and so should require less supervision when they are released to their art units, so one SPE should be able to manage more of them. This would keep more primary examiners examining instead of moving to SPE positions.

Tough one here. I don't disagree with the sentiment to go with fewer management positions to keep more primaries in the examining corps. I do see, though, how stretched the SPEs currently seem to be, and wonder how well this idea would work. It would be likely, I believe, that were this strategy to be adopted, then even more of the direct supervisory functions of the SPEs (specifically, supervising newer examiners) would be passed along to primaries, which would presumably somewhat offset the productivity gains of keeping more primaries examining instead of moving to management.

Change the way applications are distributed to prevent examiners from cherry-picking easy cases and putting off examining the tougher applications.

This has never been a real problem to my experience. There was a time when some SPEs would routinely docket hundreds of applications to examiners at a time, but I haven't seen that anytime recently. Examiners are also 'encouraged' to pick up their oldest case first (In fact the MPEP says that it is required, I believe) when starting a new application. To help encourage them, each examiner is tracked as to which application on their docket is the oldest one yet to be taken up for examination, and how long it has been their oldest case. It is the SPE's job to monitor this and to make sure that the examiners are not putting off working on an old application just because it might be a tough one.

Of course, just to be a contrarian, I'd point out that cherry-picking cases would actually decrease pendency, because if examiners all worked on the easiest cases first, they'd presumably get disposed of quicker, and so overall pendency would be reduced more so than if we worked on all of the tougher and presumably more time consuming applications first.

The PTO should open satellite offices that are geographically distributed across the country.

This proposal is bandied about every so often. Can't say that I see any down side to this. With everything going to electronic record-keeping these days, it seems like a practical plan, and would certainly expand the pool of candidates for examiner positions. There would be challenges, but perhaps not insurmountable ones.

Limit continuations and claims. This would allow examiners to perform examination more quickly (fewer claims) and to process more new applications (fewer RCEs to examine).

Well, this one has been hashed over ad nauseam, and no doubt will be again when the final decision on the new rules is finally handed down. I believe everyone's positions have pretty much been made clear. No need to go into it again right now.


So, those are the proposals. Personally, I think that if I had to pick a single issue to address in order to decrease pendency, I'd concentrate on examiner retention (although not necessarily through the changes to the law school tuition reimbursement program that the author proposed). I'm not sure what specific actions I'd propose, other than I believe that it would need to address examiners satisfaction with the job they do (and that is a completely separate issue from salary). If you want to retain examiners, they need to be happy doing what they are doing. When they are not, they leave.

Yet another one of those articles detailing all that is wrong with the PTO has been published, courtesy of Forbes. Like a great many of its kin, it is basically a brief sound-bite of a story, long on fluff and short on substance and analysis, and of course, it cites the standard four or five tired examples of 'overly obvious' patents.

If someone was truly interested in discussing problems at the PTO, it would be nice if they would do a real story, confining the discussion to patents that actually have the potential to cause problems (anybody been sued for exercising their cat with a laser pointer lately?), and they also might happen to mention the fact that examiners cannot simply wave their hands, say that something is obvious, and be done with it. Anybody out there know where I might be able to get ahold of some prior art that teaches swinging sideways on a swing? No, me neither.

Instead, I keep seeing what amounts to a carbon copy of the same ~300-word article published in various forums again and again, about every 2 or 3 months.

But first, a brief comedic diversion:



There are many facets of the job of patent examiner. Lots of searching, legal and technical research and analysis, and writing. There is, also, a bit of arguing. The nature of the job is that examiners are in a pretty much constant state of disagreement with attorneys.

Addressing an attorney's arguments can be challenging, although obviously if your prior art is solid and your rejection is strong, it is less of an issue.

Of course, occasionally an attorney submits such a lengthy response that the challenge is just to find the real arguments amongst all the blather.

I sometimes see responses where the attorney seems to make it a mission to inflate the length of their response, usually at the expense of clarity and conciseness. A couple of the more common practices I've seen include repeating the same arguments for multiple claims, and the ever-popular 3-page (and that seems to be the standard length) treatise on the requirements of making a rejection under 103, including a recitation of the statutory and legislative history. I really wouldn't think that there's much of a chance that these 'history of 103'-type arguments would have much chance of success, but I suppose it doesn't hurt to get your arguments on the record, especially since (I strongly suspect) they are pre-written and just dropped routinely into the attorney's remarks.

This type of practice does have the potential to cause problems, though, because when one sees what they perceive as boilerplate arguments, the natural inclination is to skip ahead a bit, which means that there is always the potential to miss relevant arguments.


So, what would be great for me? I'd love to see arguments formatted more consistent with appeal practice. If each distinct argument were presented as a concise statement (maybe as bullet points?), and followed by the supporting remarks, the possibility of missing an argument that needs to be addressed would be precluded.

Truth be told, I'd appreciate this type of response most specifically for when I'm reviewing the office actions of my junior examiners. They occasionally miss arguments that they should be responding to. (I'm sure it's just an oversight, and not an instance of conveniently overlooking an argument that would be tough to answer.) It takes time to go through all of the attorney's remarks to verify that the relevant arguments have been addressed by the examiner.

I'm actually not sure why there seems to be such an inconsistency between the styles utilized by attorneys when arguing their case before the examiner for a normal rejection and for an appeal brief, besides the obvious facts that there are specific guidelines for appeal briefs, and that the arguments in a brief are meant not only for the examiner, but also for the judges sitting on the BPAI.

It would seem to be a simple matter to carry the same style of presenting arguments across all attorney's submissions, though, and the appeal brief style just seems to me to be much better organized than much of what I see in my day-to-day amendments.