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January 7, 2006

Backlash to USPTO Cracking the Whip

Patent prosecutors across the country are echoing Patent Hawk in crying foul at the patent office for unfairly shifting the burden of examination onto prosecutors, limiting examinations, and hurting the prospects for deserved patent protection.

The IP Law Bulletin reports widespread reaction with frustration by patent prosecutors at the PTO proposals to limit the number of claims reviewed during initial examination, require written justifications for continuations, and being obliged to do part of the examiner's job of prior art search by writing patentability reports.

John Doll, patent resources & planning commissioner, wants to force applicants to pick 10 claims for initial examination. If they pass muster, the examiner would then look at the rest. Doll admits this skimp might only improve efficiency by 5%, equivalent to 10,000 applications out of over 400,000 filed annually. "It's not a huge savings. We'll be asking applicants to do more work," slave driver Doll said.

A huge chunk of that work will be requiring patentability reports with each application. Doll cracked the whip with, "The applicant will have to say 'here are the classes and subclasses of the invention and the periodicals and journals I've researched' and also send in search algorithms." This to save the examiner's time searching for prior art.

James Morris of Wolf Greenfield & Sacks in Boston observed, "Look at it from a jaded perspective. People are saying it's another way to push work away from the USPTO's examiners and onto patent applicants. [Patent examiners'] job is to receive applications that people believe contain inventions and determine patentability. These reports are again trying to make attorneys do the work for patent examiners. Going on the record for patentability is, in fact, the examiner's job."

Rick Bauer at Katten Muchin Rosenman in Washington D.C. noted "This is the wrong approach. This will seriously hurt inventors, who are entitled to a review of all claims at the earliest date. The long term effect is that inventors will have less protection than they deserve."

The patent office jacked its fees last year with the justification that pendency would drop, but that hasn't happened. Examiners have an average of 19.7 hours to examine an application.

The agency is hiring 1,000 new examiners each year for the next five years, with half going into the electrical arts, which has had a burgeoning number of applications, but that is probably insufficient to keep up with the increased application flow and account for high employee turnover.

The patent office is offering customer lip service by accepting written comments through May 3, 2006 via email to AB93Comments@uspto.gov for the continuation practice changes and AB94Comments@uspto.gov for the claim examination changes.

Posted by Patent Hawk at January 7, 2006 12:04 AM | Prosecution

Comments

The current problem which the PTO fails to ever address is the massive attrition here. Hiring new inexperienced examiners which may bail soon after they start, rather than holding onto experienced staff. Instead of better working conditions, the logic is to squeeze more productivity and hours from the existing staff, thereby leading to attrition. Now they're trying to stem the tide by hoisting patent reform on the outside and bringing in herds of newbies, although few will stick around after training.

Case in point, most of my art unit, myself included, will be jumping ship by the end of the year to law firms or defense contractors. Why work 55 hour weeks for the government at $60K when the private sector pays for that kind of production commitment.

Adios Doll.

Posted by: Examiner X at April 24, 2006 2:15 PM