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February 9, 2011

Getting Definite at the USPTO

The patent office has issued supplementary guidelines for examining claims in patent applications for compliance with 35 U.S.C. §112 ¶2. The PTO thinks "it is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter." The guidelines are effective as of today. Written comments are accepted until April 11, 2011. "No public hearing will be held."

The patent office tucks away its proposed examination revisions on regulations.gov. Search for "pto."

Posted by Patent Hawk at February 9, 2011 1:25 PM | Prosecution

Comments

Contrast the utmost importance with the typical weaselness of:

"These guidelines and supplemental information do not constitute substantive rule making and hence do not have the force and effect of law. They have been developed as a matter of internal Office management and are not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office. Rejections will continue to be based upon the substantive law, and it is these rejections that are appealable. Consequently, any failure by Office personnel to follow the guidelines and supplemental information is neither appealable nor petitionable."

I know the "boilerplate" I will use the first time an examiner references the MPEP (rather than actual case law - read that as substantive law).

Posted by: Pedantic Pete at February 9, 2011 9:06 PM

Here is a similar story

Last week, the U.S. Patent and Trademark Office provided additional details regarding its proposed "Three Track" patent examination initiative. An outline of the Office's Three Track program, or Enhanced Examination Timing Control Initiative, was originally provided in a Federal Register notice (75 Fed. Reg. 31763) published last June (see "USPTO Publishes Notice Regarding Enhanced Examination Timing Control Initiative"). In that notice, the Office indicated that under the Three Track proposal, applicants would be able to: (1) request "prioritized examination" (Track I examination), (2) request a delay of up to 30 months in the docketing of a non-continuing application (Track III examination), or (3) make neither of these requests and receive the current application processing (Track II examination). That notice also indicated that the fee for Track I examination "would be set at a level to provide the resources necessary to increase the work output of the USPTO so that the aggregate pendency of nonprioritized applications would not increase due to work being done on the prioritized application."

Posted by: Copyright Attorney at February 10, 2011 12:13 AM

". . . the aggregate pendency of nonprioritized applications would not increase due. . ."


WTH is "aggregate pendency?" Take all 2 million pending applications and sum the time they have been sitting? In which case you get some figure that is measured as some function of the distance light travels in a vacuum.

Do they mean "average pendency?"

Track I, the rich guys' option, costs what?, $4000?

Like Southern Calif. building all those pay freeways and pay lanes, the rich will always find a way to make life easier for themselves at the expense of everybody else.

Posted by: Babel Boy at February 10, 2011 11:08 AM

"In which case you get some figure that is measured as some function of the distance light travels in a vacuum."

Light years aren't a unit of time. That's a common mistake. You probably meant to say something like "some function of the number of hyperfine oscillations of the cesium-133 atom", but that's not really informative because all time is measured that way.

"Like Southern Calif. building all those pay freeways and pay lanes, the rich will always find a way to make life easier for themselves at the expense of everybody else."

It actually makes some degree of sense to put the fast cars on one road and the slow cars on another. And if they do it by building more roads or lanes (hiring more examiners), they're not holding up the "poor people" at all.

Posted by: IANAE at February 10, 2011 11:49 AM

" And if they do it by building more roads or lanes (hiring more examiners), they're not holding up the "poor people" at all."

Something tells me that it is not the rich people paying for the special lanes, but rather, the 80% of non rich people (who get stuck in the slower lanes).

A sense of equity is surely being violated here.

Posted by: Pedantic Pete at February 10, 2011 12:47 PM

"Something tells me that it is not the rich people paying for the special lanes, but rather, the 80% of non rich people (who get stuck in the slower lanes)."

Well then, it's not really a system to benefit the rich, is it?

Each person individually makes an economic decision to take the faster pay road or the slower free road. If you get more benefit out of the pay road than it costs you to access it, you're ahead of the game. If the car that would have been in front of you has chosen to take a different route, you're ahead of the game.

This is only a valid complaint to the extent that the PTO won't be able to hire enough new examiners at any price to handle the Tier 1 requests. Which I fear is highly likely, but let's keep things in perspective all the same.

Posted by: IANAE at February 10, 2011 12:52 PM

"Well then, it's not really a system to benefit the rich, is it?"

Well let's think about it for a second.

The rich get the benefits (the faster road) and the poor pay for it (the additional lanes).

Not sure why you are having difficulty here IANAE. The true cost is in the building of the lanes - paid for by the poor. The per-use cost is peanuts to the rich and out of reach to the poor.

Sport of Kings and all. Built on the backs of peasants.


This is not a difficult concept.

Posted by: Pedantic Pete at February 10, 2011 1:41 PM

"The true cost is in the building of the lanes - paid for by the poor. The per-use cost is peanuts to the rich and out of reach to the poor."

The per-use cost is paid to the same people who built the road in the first place, is it not? Whether or not it's "peanuts" to the individual user is immaterial, as long as it pays for the road in the aggregate. Besides, in the PTO model Tier 1 is going to be deliberately priced to cover its entire cost, so the poor people who don't use it won't pay.

Besides, why are we so dead set against the rich being able to pay more for an optional high level of service, while maintaining the status quo for those unwilling to pay? What's the point of being rich if you can't buy nice things?

Posted by: IANAE at February 10, 2011 2:04 PM

",i>The per-use cost is paid to the same people who built the road in the first place, is it not?"

Obviously not. Paid "to" is the PTO. built the road is paid from - that be the poor. Hard to mistake the two, really.

Whether or not it's "peanuts" is...immaterial - Absolutely false. That's the beauty of the Sport of Kings. Pricing out the riffraff is hardly immaterial. It is the material.

C'mon IANAE, you strike me as a clever chap - do I really need to explain such basics to you?

Posted by: Pedantic Pete at February 10, 2011 2:54 PM

"Besides, why are we so dead set against the rich being able to pay more for an optional high level of service, while maintaining the status quo for those unwilling to pay? What's the point of being rich if you can't buy nice things?"

Because everyone knows that the rich people are the ones with the power to get the whole thing moving faster. And instead, they're just making it faster for themselves and not putting their full weight behind reforms that would speed the system for all.

At least, that is some people's take I'm sure. I personally am all for an express lane that I could pay for when I wanted to use it. Especially since that express lane is still a marginal sum compared to what it will cost your avg person to have their patent prosecuted by an attorney anyway.

IMO what they should do is make it so that if you want to use the express lane you not only pay for your whole costs, you pay a little to subsidize faster examination overall as well. Oh, and they have to get rid of fee diversion as well obviously.

Posted by: 6000 at February 10, 2011 4:28 PM

Here is a similar story

With the help of Patent Docs readers, we have been trying to collect copies of all of the briefs that have been filed in the Association of Molecular Pathology v. U.S. Patent and Trademark Office ("Myriad") case and make them available on our site. Of the thirty amicus briefs that have been filed in this case, seventeen briefs were filed in support of Defendants-Appellants and/or reversal, twelve briefs were filed in support of Plaintiffs-Appellees and/or affirmance, and the position of one brief remains to be determined (Patent Docs has not yet obtained a copy of this brief).

Posted by: Copyright Attorney at February 11, 2011 12:42 AM

Pete: Obviously not. Paid "to" is the PTO. built the road is paid from - that be the poor. Hard to mistake the two, really.

Look. The incremental cost of this program is borne by the PTO, who is passing on the entire cost to the people who pay the access fee. They're even hiring extra examiners (in theory) so they're not taking lanes away from the free highway the common folk use.

I don't have time to explain to you that roads are paid for by tax revenue, and usage fees are tax revenue that goes into the same pot. Just try to understand the specifics of this proposal please.

6k: Because everyone knows that the rich people are the ones with the power to get the whole thing moving faster. And instead, they're just making it faster for themselves and not putting their full weight behind reforms that would speed the system for all.

Two things.

First, the "whole thing" doesn't need to move faster. There are lots of applications in the system that are in no hurry at all, because there's no infringing product anywhere near the market. It's generally a good idea to figure out which applications need examination sooner and move them up in the queue.

Second, "getting the whole thing moving faster" in this way is apparently budgeted to cost something like $4k per application, and that's only the incremental cost to the first disposal count. Even leaving aside the problem that there aren't enough examiners in the world to do that across the board, it's completely impractical to get the whole system moving in this way.

And let's be clear here. This isn't a program for "the rich" as we normally understand the term. IBM is not going to add $4k to the cost of every single application just to get their patents quicker. Imagine how important it is for them to save even a thousand dollars per application in legal fees or extensions of time. They operate for profit. At most, they'll pick out a small number of very urgent applications, and throw some money at them.

This is a program for those applications that are worth $4k more if they issue this year than if they issue in five years, regardless of who owns them. If your VC investment depends on getting your patent issued this year, you (or your VC) will find the money. If you have an operating business and an infringer, your sales of the claimed product will cover the fee. If you can't come up with $4k this year for an official fee, you weren't going to be able to afford to respond to the two office actions the PTO has promised you within the year anyway, or the issue fee you hope you'll owe them. And you certainly couldn't afford an Examination Support Document.

6k: IMO what they should do is make it so that if you want to use the express lane you not only pay for your whole costs, you pay a little to subsidize faster examination overall as well.

They sort of are, in that every car taking the pay road won't be clogging up the free road. As long as they fix that fee diversion thing, I think they'll be okay. Besides, they apparently only have statutory authority to recover their budgeted costs.

Posted by: IANAE at February 11, 2011 7:57 AM

IANAE, that sounds awfully lot like a paid commercial.

Now back to the program.

And don't worry about having tiime to explain to me - I already get it (wink wink).

Posted by: Pedantic Pete at February 11, 2011 9:10 AM

"IANAE, that sounds awfully lot like a paid commercial."

Is it one of those BMW commercials where they advertise a faster car that costs more money, that really only rich people can afford, but they charge those rich people enough money to recover the production costs and they don't take any factory space away from the production of cheaper cars?

Because very few people complain about those. So why shouldn't the PTO spec me an m-series examination if I'm willing and able to pay the entire cost?

Posted by: IANAE at February 11, 2011 9:28 AM

INANE, you're having an off day. Your panties are in a wad, your eyes are crossed, and and your breath stinks. Lock the liquor cabinet, dude.

INANE: "Light years aren't a unit of time. That's a common mistake."

Thanks for that, I never would have guessed. Now go back and read my comment. Does it say or imply that light years are a unit of time? No. It says "you get some figure that is measured as some function of the distance light travels in a vacuum."

Can you honestly not conceive of a function of c that gives as its output time? Are you really that mathematically regressed?

As to your view that the world belongs to the rich and the poor should just suck up to it and pay the price, you need to go back to your undergraduate courses and re-read Alexis de Tocqueville.

Even in 1830 he was mesmerized by the American democratic society as the antithesis of the European aristocracy. He spent 500 pages explaining how American democratic government was going to eclipse European aristocratic governments because a larger fraction of a society succeeds in a society where everyone has an equal chance.

And he was 100% correct. America flourished as Europe regressed. Now we're going in the opposite direction -- away from egalitarianism and toward a caste system -- and nowhere is that more evident than in the PTO's vision of a patent aristocracy.

The other point you are ignoring is that the 1 year super-prosecution gives the wealthy two very major advantages:

First, it adds years of enforceable life to the patent in a system where patent life is measured from the filing date.

Second, the applicant will know 6 months before the publication date if the application is rejected. They can abandon at that point and avoid disclosure.

So they get to maintain the original quid pro quo the system used to be all about. The riff-raff will still, except for non-foreign filing small entities, be required to disclose their invention to the world regardless of whether or not they ever get a patent.

So even if the Tier 1 aristocracy doesn't slow down the rest, they still get very substantial value for their buck and an advantage over the regular applicants, the lower caste.

Posted by: Babel Boy at February 11, 2011 9:34 AM

"Can you honestly not conceive of a function of c that gives as its output time?"

I can, but I also know it's nonsensical to measure time as a function of the distance light travels in a vacuum. The distance light travels in a vacuum is defined as a function of time, and not the other way around. Now would be a good time to stop defending your poorly thought-out attempt to sound clever by mentioning the speed of light.

"a larger fraction of a society succeeds in a society where everyone has an equal chance."

Yes, everyone is given an equal chance. But as you say, only a fraction of them succeed. The ones who succeed are the ones who manage to amass some money, and the measure (and motivation) of their success is the improved goods and services they can buy with their money.

America differs from old-timey Europe only by who has the opportunity to become successful. Both societies are the same in that success means riches and the ability to have nicer things. Look how many things American rich people have that poor people could never hope to afford.

America has never been about making sure everybody has the same of everything. You're probably thinking of a different country, east of Europe, that didn't flourish quite as well.

"The other point you are ignoring is that the 1 year super-prosecution gives the wealthy two very major advantages:"

I'm not ignoring that at all. It should be self-evident that faster prosecution inherently gives those advantages. If it's worth $4k more to you to have those advantages, by all means spend the money. If it's not worth $4k to you, don't complain because it's worth it to somebody else with a completely different patent.

Also, most people will still have no idea whether "the application is rejected" before the publication date. I assume that by "rejected" you don't mean receiving an office action on the merits, since you probably know before filing that you'll get one of those. Even under Tier 1, you only get special treatment until you file an RCE, at which point many applicants still have no idea whether they're willing or able to salvage something patentable from their application. Besides, you could always do your own search and have a reasonably high level of confidence (as high as you're willing to pay for) that your claims would be allowable.

"So even if the Tier 1 aristocracy doesn't slow down the rest, they still get very substantial value for their buck and an advantage over the regular applicants, the lower caste."

Your complaint is that Tier 1 is worth the price for those who pay it? Of course it is. If it weren't, nobody would pay it. Any sensible business person will spend the money on anything if the economic return is worth it, but even rich people who want to profit from their patents won't spend extra money on applications that aren't worth it. That's why it won't come down to which applicants are rich, but which applications are more valuable if examined in this way.

Posted by: IANAE at February 11, 2011 9:58 AM

"The ones who succeed are the ones who manage to amass some money, and the measure (and motivation) of their success is the improved goods and services they can buy with their money."

Everyone is equal.

It just that those with money can buy a better equal.

The sport of Kings.

Posted by: Pedantic Pete at February 11, 2011 10:53 AM

Everyone is equal.

It just that those with money can buy a better equal.

By which you mean "everything is the same price for everybody, and you can have it if you can pay".

That's pretty much the entire basis for capitalism, isn't it?

Posted by: IANAE at February 11, 2011 11:12 AM

Amongst other things - sure.

(wink wink)

Posted by: Pedantic Pete at February 11, 2011 12:48 PM

INANE, with your elitist attitude, I shiver to think what your take on universal health care is.

America has long ago lost any resemblance to what made it so great. Now it is just another aristocracy no more worth living in than any of the others.

The rich elect themselves into office under the guise of competing parties in order to control the policies. They throw enough loose crumbs to the lower castes to prevent, or at least delay, social upheaval, but keep the cake for themselves: all the health care they need when they need it, top-shelf patent prosecution while the mules wait in line, their own freeway system, paid for with everyone's tax dollars, private airports all across the country paid for with everyone's tax dollars -- life is good on the sunny side of the street.

Tier I is just another example of this trend toward economic stratification. That anyone would even suggest such a thing is a symptom of what the country has degenerated into.

Posted by: Babel Boy at February 11, 2011 8:58 PM

INANE, with your elitist attitude, I shiver to think what your take on universal health care is.

Not

I'm very much in favor of universal health care. Health care is about the equality of opportunity that makes America great. You have to give people the basics, like health, if you want them to be able to succeed. The people who can afford to pay taxes owe that level of equality to the public at large.

Patents are a business asset, and are strictly speaking optional. You get one if it's worth it, you don't if it's not. If you want a better one, and it's worth extra money, you should be able to get a better one. I'm all for a filter that speeds up the ones whose value is more time-sensitive. It's the best way to ease the pain of those people who complain that the delay is costing them money, and it'll be faster than if they'd tried to tackle the entire backlog at once.

I also believe that if you want better service than can be provided across the board, you should have to pay for it. And it should be made available for those who can pay for it. At least in this case, the "rich" (by which I mean "those with a business case for getting their patent sooner") won't have their advantage paid for with tax dollars. It's not costing you anything.

Let's not forget that the greatest expense of obtaining a patent, and the one everybody complains about, isn't the PTO. It's us. We're also responsible for more of the delay in prosecution than most of us care to admit. We should be the ones leading the charge for faster and cheaper patents, at least for those who want them, whether the changes need to be made on the PTO's end or on ours.

I don't believe in charity for for-profit businesses. If they can't succeed on their own merits, they should fail. Most businesses also believe that they should turn a profit, which is why the rich ones with lots of patents will make very little use of Tier 1 examination, unless they have a particularly urgent case.

Tier I is just another example of this trend toward economic stratification.

There has to be some economic stratification. The whole point of everybody being able to succeed is that success is something to aspire to. Why should I bother being successful if all I can do with my money is make a big pile out of it and live the same way as people who didn't work as hard?

That anyone would even suggest such a thing is a symptom of what the country has degenerated into.

The country has degenerated into capitalism?

Posted by: IANAE at February 14, 2011 8:09 AM

"The people who can afford to pay taxes owe that level of equality to the public at large."

Scary how close this is to:

"From each according to his ability, to each according to his needs"

W

T

F

Posted by: looking glass at February 14, 2011 9:14 AM

"From each according to his ability, to each according to his needs"

If you disagree with that on principle, you might care to disband the very able armed forces that defend us all as needed.

Nobody can provide a public benefit but those with the ability. Nobody can benefit but those in need. All we're discussing is where to draw the line and say "the public doesn't owe you this, pay for it yourself".

Posted by: IANAE at February 14, 2011 9:47 AM

"All we're discussing is where to draw the line"

If you really think that, then you are more stupid than I could ever have imagined. Or simply more dishonest.

Posted by: looking glass at February 14, 2011 11:17 AM

If you really think that, then you are more stupid than I could ever have imagined.

I don't have to take that from a guy who routinely has serious trouble reconciling two perfectly consistent (or unrelated) statements, but can't even frame his lack of understanding in the form of a coherent question.

I think you're improving, though. This is the first time I've seen you put two characters together on the same line.

Posted by: IANAE at February 14, 2011 11:32 AM

I'm leaning towards the dishonest.

And you forgot to ask me if I care if you can really take it or not.

Posted by: looking glass at February 14, 2011 12:42 PM

INANE: "I don't believe in charity for for-profit businesses. If they can't succeed on their own merits, they should fail. Most businesses also believe that they should turn a profit, which is why the rich ones with lots of patents will make very little use of Tier 1 examination, unless they have a particularly urgent case."

No question you have given these issues a lot of thought. But I still think you are missing the main objection to the govt soliciting $4000 bribes to provide public services. If my competitor can afford the bribes but I cannot, then the government is tilting the field, which is precisely what every bribe does.

It is utter nonsense to equate the quality or value of the invention with the amount of money the inventor or assignee has to throw at the PTO. That is just psychotic BS. The fact that I don't have an extra $4000 says nothing about how worthwhile or meritorious my application is.

What Kappos is doing, and knows he's doing, is putting competitors in a position where they all have to pay the $4000 bribe for accelerated exam in order to keep up in a tight field. PTO wins big time on this one.

Posted by: Babel Boy at February 14, 2011 1:18 PM

I give up. I have no idea what you even think you're responding to.

I can't compete with you in a non-sequitur-off. If you ever want to have an actual conversation that involves some form of communication, you know where to find me.

Posted by: IANAE at February 14, 2011 1:20 PM

But I still think you are missing the main objection to the govt soliciting $4000 bribes to provide public services.

I suppose you also object to the filing bribe, the examination bribe, the publication bribe, the issue bribe and the maintenance bribes? The petition bribes for requesting the other forms of quicker examination?

It is utter nonsense to equate the quality or value of the invention with the amount of money the inventor or assignee has to throw at the PTO.

Right, because nobody else charges more money for providing services when those services give the client extra value. Law firms wouldn't dream of it, I suppose?

The fact that I don't have an extra $4000 says nothing about how worthwhile or meritorious my application is.

Right, if you don't have $4k in the world, that only says one thing about your application - it'll go abandoned for failure to respond to the second office action anyway, and it's moot because you'll never have the capital to get a product to market.

If you do manage to scrounge together $4k, and you have to choose where to invest it in your business, you can make an economic decision about how much it's worth to you to get your patent quicker. Several years quicker, in some arts.

On the other hand, the fact that you do have an extra $4k also says nothing about how worthwhile your application is. Most companies with lots of cash and lots of patents will use Tier 1 very sparingly, because this isn't a program for the rich - it's a program for people who have a strong business reason to get their patent sooner.

What Kappos is doing, and knows he's doing, is putting competitors in a position where they all have to pay the $4000 bribe for accelerated exam in order to keep up in a tight field.

That won't happen. Most people still won't pay more to get their patent quicker, because they aren't in any rush and it's a waste of their money. Nobody's racing to get their patents before other people get patents.

$4k on a patent is a huge amount to a big "rich" company that has thousands of patents (look how hard they work to save a few bucks on attorney fees), and it's not that much if you only have the one application and faster examination will score you a VC investment or secure your market for your only product.

What he's doing is telling people that the importance of their patent must be this high to ride the ride.

Posted by: IANAE at February 14, 2011 1:46 PM

"That won't happen."

I could see it happening in some "tight fields". But even if it does, it is irrelevant.

"Nobody's racing to get their patents before other people get patents."

On the contrary, software twerp consters, for instance, Eugene, are most certainly racing to get their patents issued so that they can con more people out of more money.

Posted by: 6000 at February 14, 2011 4:25 PM

"No question you have given these issues a lot of thought. But I still think you are missing the main objection to the govt soliciting $4000 bribes to provide public services."

A fee is not recognized as being a bribe when it is levied across the board by the government. Unfortunately. The same as taxes are supposedly not a bribe for the government to not storm your house and take you to jail. In reality they are, but we've given them a special name and after they meet the definitions for those special names they're then deemed acceptable.

Posted by: 6000 at February 14, 2011 4:30 PM

On the contrary, [people like] Eugene, are most certainly racing to get their patents issued so that they can [make] more money.

Yes, that's my point. If a patent is worth money by itself, for example to carve out a market niche, somebody might pay extra to get it faster. Gene is racing against his competitors' services, not their patents. In other words, nobody will be forced to get patents faster simply because their competitors are getting patents faster. It won't turn into an arms race.

Posted by: IANAE at February 15, 2011 7:34 AM

"It won't turn into an arms race."

Interesting that you bring that up. It hypothetically could. The one guy is trying to start up a business and submits for a patent. The other guy who happens to know about the first guy is also trying to setup shop in that niche and files for patents of his own. Both are competing for startup dollars and then for business. Whichever one gets their patent first may have an advantage, thus, the other guy might also be forced into getting his patent, ala arms race.

And even though as we all know, whenever you create a chance for something ridiculous like this to happen it usually does due to the nature of reality, I will state that I think the likelihood of it happening often is rather slim.

Also, I not convinced that we should encourage software twerp consters or provide them an easier way to scam people quicker.

Posted by: 6000 at February 15, 2011 10:06 AM

Whichever one gets their patent first may have an advantage,

Sure, that's theoretically possible in a highly contrived circumstance, but it's still more a case of two patents that are each, individually, urgently needed to exclude a competitor.

Whichever guy has the oldest priority date will be able to do what his application discloses no matter what patents the other guy gets anyway, so it still won't strictly be patent versus patent. Even on the off chance that the two are pitching the exact same VC.

Posted by: IANAE at February 15, 2011 10:52 AM

"Sure, that's theoretically possible in a highly contrived circumstance, but it's still more a case of two patents that are each, individually, urgently needed to exclude a competitor."

Highly contrived??? Come out of your cocoon and look at the world, dude.

Success is just as much about who has the largest portfolio to attract buyers and investors as it is about patent quality. If I have $40,000 to blow on examination bribes and you don't, whose portfolio is going to expand in the next year?

The USPTO's new logo: "There is the quick, and there is the dead. The choice is yours."

Posted by: Babel Boy at February 15, 2011 11:05 AM

To be fair BB that choice has been many an american's choice since the wild wild west.

Posted by: 6000 at February 15, 2011 12:26 PM