December 14, 2008
The root problem with patent quality has always been with the patent office. The current USPTO administration has rightly received nothing but criticism for its high-handed rules changes, poisonous work environment leading to massive attrition, shoddy examination regime, and blame game on applicants. In testimony last week before Congress, former PTO heads nattered about backlog.
Gerald Mossinghoff, Reagan's PTO director, argued that none of the patent reform proposals floating around are worth much until pendency is reduced. Mossinghoff called the 700,000 to 1.2 million application backlog "horrendous," and snapped at current PTO head Jon Dudas for setting "soft, stair-step goals" for addressing the problem, rather than tackling a long-term strategy.
Nick Godici, who ran the PTO from 2001 until 2005, considers the backlog as stifling innovation, calling the PTO "sand in the gears" of progress. Patents help start-up companies get funding.
The current accelerated examination (AE) program is becoming a farce. Under AE, an applicant does more examination work than an examiner, in return for a promise of patent grant within a year. Once docketed, an examiner has a month to grant the patent or get an office action out. But the office isn't geared to produce, so AE applications sit for months undocketed.
Bruce Lehman, PTO honcho for many of the Clinton years, noted PTO pride in cutting the allowance rate, the lowest now in "many years," but the upshot is driving patent pendency by bogging examiners down, Lehman argued. A spokeswoman for the agency disavowed allowance rate as a target or goal.
More rejections now are technically worthless and trivial than in years past. The Office claims as a key quality measurement office actions without error. That means dotting the i's and crossing the t's on the vacuous rejections, up from 94.7% in 2004 to 96.3% in fiscal 2008.
Mossinghoff, co-author of a recent report for the Obama transition team on how to overhaul the agency, likes turning the PTO into a government corporation. If you think that sounds like a shell game, with all the potential of shuffling the deck chairs on the Titanic, you're on the right track. The problem is not money, or structure, it's good management, and that's just getting quality people.
Posted by Patent Hawk at December 14, 2008 12:42 PM | The Patent Office
"More rejections now are technically worthless and trivial than in years past."
I have been in private patent practice nearly 30 years and I agree with your observation.
Thank you for this article
Posted by: John prosecutor at December 15, 2008 3:20 PM
I couldn't agree more. The work product at the PTO now is nothing more than about 3,000+ relatively newbie examiners (i.e. less than about 5 years experience) picking up each new case and saying to themselves, "Okay, I haven't even read one word of this app, but I know I have to reject every single claim, so let me do a 10 second Google search with some terms from claim 1, and then just clack away on my keyboard and print out whatever happens to spill forth from my fingers, and as long as the word 'allow' or any of its variations doesn't appear anywhere in the Office Action, my SPE will sign it and the SPRE and/or QAS or whatever other donothingknownothinguselessdeadweightGS-15 gets involved will back me up. Hopefully, the completely broken appeal and petitions process will dissuade the applicant from appealing and prompt them to file a couple RCE's before they get totally fed up. By then I'll already have my bonus for my 'outstanding' work."
The whole system over there is garbage. It needs to be cleaned out completely.
Posted by: JD at December 16, 2008 7:41 AM
Patent Hawk -- a graph showing the number of examiners having more than five years experience each year for the past twenty years would be interesting/informative.
Posted by: John prosecutor at December 16, 2008 11:36 AM
JD, further to your rather accurate description of the PTO, I would add that the examiners ignore Applicant's arguments and remarks in their second and further Office Actions.
Posted by: John prosecutor at December 16, 2008 11:58 AM
And in the unlikely event that the examiner does "respond" to the arguments, it is almost always inapplicable boilerplate form paragraph garbage. If it's not form paragraph nonsense, it's non sequiturs.
I had an examiner citing me In re Rose. Giving me the typical "change in size is not patentable." I responded, discussed, and distinguished, the facts of In re Rose from the claimed invention, and explained why the case wasn't applicable and couldn't be relied on. Examiner ignored my arguments, repeated the rejection and reliance on the case. I filed another response, cited MPEP 707.07(f) (the most ignored section), and demanded an answer. In the next OA, here's what I got: In response to Applicant's arguments regarding claims whatever, Applicant is reminded that a change in size is not patentable. See In re Rose.
All of the examiners hired since about 2003 or 2004 are essentially useless. They've been taught nothing but "quality = reject, reject, reject" and how to churn out OA's where they use all kinds of concepts (e.g. inherency, Official Notice, case law, etc.) that they have absolutely no understanding of to reject every claim in hopes of frustrating applicants to file RCE's. That's all they know how to do.
Thank goodness for all the attrition or else we'd be stuck with many more thousands of these types of examiners for decades to come.
They will all have to be retrained. Reeducated. Reprogrammed. Call it whatever you want.
Posted by: JD at December 16, 2008 12:53 PM
JD, many newbie examiners have a mindset that patent attorneys are gaming the system and don't understand what is patentable and what isn't, and thus are not to be taken seriously
Posted by: John prosecutor at December 16, 2008 1:41 PM
And they get that mindset from the utterly corrupt and incompetent political appointee hacks and lifers that are (mis)managing the PTO. It's disgraceful that these people are issuing Federal Register notices and giving interviews in which they attempt to blame applicants and the patent bar for the backlog and pendency. Those problems are 100% the fault of their incompetence and refusal to obey the law.
Posted by: JD at December 16, 2008 2:18 PM
didn't the PTO have some sort of contest among various business schools, e.g., GW, to come up with solutions to the backlog problems?
what were the recommended solutions?
Posted by: John prosecutor at December 16, 2008 3:47 PM
And let's not forget that the PTO was conducting a study of the examiner production requirements (i.e. hours/balanced disposal).
What were the results of the study?
John, the recommended solutions and the results of the study were the same - the backlog and pendency problems at the PTO are entirely the fault of applicants and the patent bar, so issue a report that claims that the PTO is doing record breaking quantity at record breaking quality, give everybody a huge pat on the back, and a bonus. Leave the mess for the crew to clean up.
Posted by: JD at December 16, 2008 3:57 PM
JP, it wasn't just some contest, it was the mother of all patent contests.
In retrospect, the solution was Peterlin's resignation (though read the comments to the post below to see what Peterlin thought the solution was):
The "Day in the Life of a Patent Examiner" program did produce just one video (which used the analogy of unwrapped chocolates exiting a chocolate production line to show the desired Examiners' "allowance error rate"):
"If one piece of candy gets past you and into the packing room unwrapped, you're FIRED!!"
Posted by: NIPRA anonymous at December 16, 2008 4:13 PM