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June 15, 2008

Answers, Of A Sort

House Judiciary Subcommittee Chair Rep. Berman posed questions to the Jon Dudas patent cabal last month. Dudas dutifully replied.

The PTO has forecast models. The agency correlates economic growth with patent filing rate. Which is to say they seemingly made an assumption, with no mention of whether the correlation holds historically, or that the historical correlation was used. Competence and credibility are not the long suits at the PTO nowadays.

Dudas keeps playing the tune "do some work for us" - having applicants shoulder as much of the examination burden as possible, under the non de plume of "applicant quality submissions."

Having been stung about examiner attrition, Dudas claimed that "The USPTO's FY 2007 attrition rate was 8.5% -- lower than comparable industry averages and a significant improvement over comparable past years." The "comparable industry" is "the Federal workforce as a whole." No mention whether that included the federal prison inmate population.

The PTO continues to tinker with Skinnerian examiner management in the form of production goals. Dudas evaded directly addressing whether production goals adversely affect attrition with: "the highest attrition rates tend to be for people with the lowest production goals. This suggests that production goals are not the lone influence on attrition rates."

Dudas denied any impropriety by the PTO in its meeting(s) with wireless Blackberry maker RIM while RIM was sued by NTP and had NTP under reexamination. Considering the circumstances, the meeting itself was improper.

Deferred examination could be implemented as a procedural rule change - by applicant permission. Current rules may require an extension of grant time, but there's a tradeoff that may be worth making to some applicants. Dudas' answer displayed a lack of clarity, making deferred examination more rigmarole than deserved.

Implement in a step-wise fashion:

a. Provide an increased notice to file missing parts time period for response within our existing regulatory and statutory authority (e.g., increase from a two month extendible period to a 14-month extendible period);

b. Obtain statutory authority to implement an examination fee through regulations based on windows of time after filing where the greatest fee is due on filing, or within one year of filing, and lesser fees for later submissions. Note: Third parties would be able to pay such fee.

c. Increase provisional rights associated with publication and permit a provisional applicant to request publication. Increase the time period within which a nonprovisional application must be filed to claim benefit of the provisional application filing date to five years. As a result, many inventions would not be the subject of non-provisional applications because they would be recognized as obsolete before expiration of the five year period and therefore would not require examination resources.

Thanks to Prof. Crouch at Patently-O for the document link.

Posted by Patent Hawk at June 15, 2008 8:11 PM | The Patent Office


Many have said it before. Almost every other country does not have a requirement to disclose information material to patentability. These countries do a far better job than the USPTO finding relevant references and preparing meaningful Office Actions.

In the U.S., though, we are supposed (by the Patent Office's admissions) to think of the Examiner as inept. The Office wants us to hold the Examiner's hand. Not only do we disclose what we know, we should also do the search for the Examiner, then both the first Office Action for the Examiner and the first response to the Office Action (this is an accurate description of the characterization necessary for the ESD/ADS). Only then is the Examiner supposed to be able to "examine" the application.

Of course, we should see what the logical, inevitable extension of adopting such a system. Anybody want to hazard a guess? Inequitable conduct when the Examiner cannot issue the case after the ESD. Why would that be? Because, the presumption (as far as the Office would be concerned) would be that we would do an adequate job searching, and an honest job characterizing the prior art and the claims. If the Examiner does not agree with us, then surely we must be trying to deceive the Office. Look for it - we may see the day when the need for the Office to issue a substantive Office Action raises the presumption that the patent lawyer has acted dishonestly.

Posted by: The Mad Prosecutor at June 16, 2008 7:21 AM