March 28, 2014
Making It Up
Patent subject matter eligibility under 35 USC §101 has been clarified by the Supreme Court in recent years. In providing new guidance to examiners, USPTO management decided to ignore the law and inventively go their own way. The guidance criteria has an examiner ask whether a claim is "significantly different" than "judicial exceptions." Such "exceptions" to patentability (i.e., cannot be patented) are "abstract ideas, laws of nature/natural principles, natural phenomena, and natural products." Explaining what "significantly different" means is well elaborated. But the upshot is that for years to come, patents will be denied or granted based upon criteria that are not well rooted in law. In other words, business as usual at the patent office.
Posted by Patent Hawk at 2:36 PM | The Patent Office
January 24, 2013
Rexnord Industries got an inter partes reexam on 6,523,680, which claims a radius conveyor belt system, after patent holder Habasit accused Rexnord of infringement. The examiner crucified the patent on the alter of prior art, but the PTO Board resurrected it, holding the patent valid. Rexnord appealed to the CAFC.
Posted by Patent Hawk at 12:26 PM | Prosecution
December 27, 2012
Hal Wegner reports that "several dozen - or scores of hundreds - of patent applications remain pending" that predate the 1995 GATT treaty. If granted, these patents would have a 35-year term from filing date (20 is nominal), lasting to 2030. IPO Daily News reports that the patent backlog remains unchecked, holding steady at 1.25 million pending applications for the past three years. After an examiner hiring surge this past year, the only improvement is time to first office action.
Posted by Patent Hawk at 1:15 AM | The Patent Office
March 8, 2012
35 U.S.C. §251 affords "reissue of defective patents," with a caveat as to claim scope. "No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent." 5,940,600 claims managing computer data channels. Within 2 years of grant, '600 inventors filed a reissue application, seeking to broaden claim scope. Granted. Outside the 2-year window, two more broadening reissues were sought. The third reissue attempt ran afoul of PTO tolerance, as the broadened claims sought were unrelated to those filed for within the 2-year window. The CAFC appeal was another disgrace for the patent office for its ham-handedness.
Posted by Patent Hawk at 8:26 PM | The Patent Office
March 5, 2012
USPTO honcho David Kappos is showing his chops as a political hack. In announcing 506,000 patent applications in FY 2011, Kappos crowed before Congress: "These figures confirm that innovation is alive and well and will help speed our nation's economic recovery." But only 270,000 new applications were filed. The rest were RCEs, the signature of either bumbling or desperation.
Posted by Patent Hawk at 12:08 PM | The Patent Office
February 20, 2012
Foley & Lardner attorney Andrew S. Baluch has his knickers in a twist over a USPTO power grab to pummel inventors by denying them their legal rights. The new patent act explicitly allows a patent holder under inter partes reexam to amend claims however seen fit. But the PTO has "proposed regulations would deny the patent owner's right to amend - in a first or in any subsequent motion to amend - whenever the Board determines that the amendment 'seeks to enlarge the scope of the claims of the patent or introduce new subject matter.'" Read Mr. Baluch's paper.
Posted by Patent Hawk at 5:31 PM | The Patent Office
February 16, 2012
The USPTO is horrifically incompetent, something which the CAFC recognizes, even as it is itself riven with malfeasance. In oral arguments In re Collins (CAFC 2011-1293), panel Judges Moore and Reyna savaged the PTO for its idiocy. Judge Moore to the PTO: "It makes no sense. I think this is a terrible rejection. I think you all have done a really sloppy job. I know you've got a big backlog. I know you're out a few judges. This is ridiculous. This is a bad rejection. There's a good rejection you could have made. This isn't it." Like craven lawyers everywhere, the PTO went on to defend the rationally indefensible. Despite the panel's professed outrage, in a show of solidarity, the panel went on to affirm the PTO.
Posted by Patent Hawk at 1:27 PM | The Patent Office
February 8, 2012
suffered an ex parte reexam. '983 claims a gas particle counter. The
claimed technology also applies to liquid contamination. Not
surprisingly, some claims were found obvious. But then there was this:
The Board also rejected claims 6-8 for lack of written description under 35 U.S.C. § 112 ¶1. The PTO concedes that these rejections are in error and "seeks remand to the Board for it to withdraw the written description rejection and take appropriate action." Appellee's Br. 26. The Appellant agrees. Reply Br. 37.
Such concession of incompetence is refreshingly rare. In Re
Yufa (CAFC 2011-1417).
Posted by Patent Hawk at 7:21 PM | The Patent Office
October 6, 2011
Old Mule on Old Ground
Rule of law and adherence to procedure are a shell game at the USPTO, just as competent examination on the merits is a chimera. Less than three weeks ago the CAFC kicked the BPAI for making up a new rejection when the examiner's wasn't up to snuff, then not allowing the applicant to address it. Another of the same ilk came to the CAFC: In re Steppan (CAFC 2010-1261), and the CAFC kicked it back for a makeover. The patent office, led by former IBMer David Kappos, plays dirty with pipsqueak inventors. This sort of problem never crops up with an application assigned to a major corporation.
Posted by Patent Hawk at 10:08 PM | Prosecution
August 14, 2011
Hal Wegner predicts "The Leahy Smith America Invents Act is likely to be enacted this year." The icing on top of that rotten cake is "that there will nevertheless be a significant fee diversion that will occur later this year: This will occur as a result of the debt ceiling legislation that has created a 'Super Committee' to propose massive budget cuts." The wretched incompetence of the federal government spirals down. While the patent office has had years of sufficient funds, it has made little progress in streamlining its operations or improving the quality of examination. The coming consequence of the inevitable will be to provide a ready excuse for the PTO's performance - not enough funds to do a decent job. But not everything is going down. The BPAI backlog, already on a steep ascent owing to excremental examination, will reach liftoff velocity, as the chimera of patents as a spur to the economy slips further into the haze.
Posted by Patent Hawk at 8:55 AM | The Patent Office
April 26, 2011
Wilt of the Gilt
The USPTO abruptly announced cancellation of it gold-plated patent program, promising hair-trigger action for a serious bribe. (Keep in mind that "hair-trigger" in governmentese is more like "glacial" by business standards. Einstein reminds that everything is relative except the cosmological constant, which he dropped. Because constants just aren't what they used to be. Or might be. At least constantly. But I digress.) This shake-up of a shakedown has Hal Wegner hopping mad. His point is that such the program simply can't decease as a matter of caprice, the the PTO can't just shuck it off with a shake of its paw as a matter of law. Hal's persnickety perspective is scintillatingly skewed. We're talking about the patent office, where "broadest reasonable interpretation" rules the roost. And on that roost, what is reasonably broadest makes the horizon line of infinity feel tiny indeed.
Posted by Patent Hawk at 11:06 AM | The Patent Office
April 21, 2011
The USPTO had a gold-plated patent examination fast-track planned, called "Prioritized Examination," (also "Track One") scheduled into existence on May 4. For the privilege of working with the office, upon payment of a $9,520 fee, an applicant might hope for allowance within a year. Track One has been put aside, the cancellation ostensibly attributed to budget cuts, though the application fee makes that excuse ponderous.
Along with the new Patent Decimation Act about to pass Congress, it's high time for Americans to stop inventing and get back to the inscrutable financial engineering that bred the illusion of wealth in this country for so long. After all, in siphoning funds from the PTO, and pocketing millions from mega-corporations for corrupt legislation, Congress sets the example for the nation that greed is good. Or at least good enough for government work.
Posted by Patent Hawk at 12:19 PM | The Patent Office
January 14, 2011
Not Open For Business
When my reexamination appellant brief exceeded 30 pages, I received notice of it being "defective." To correct the defect, under MPEP §1.943(c), a certificate is required to state that the brief is less than 14,000 words (the brief is an illustrated comic book: lots of pictures, because words alone just don't seem to register). Do I simply need to provide a certificate, or is the required response more elaborate? However reasonable the question, the answer was not forthcoming. The supervisory paralegal at 571-272-9797 listened to my question, then passed me off to another department at 571-272-7705 (central reexam), who passed me off to 571-272-7726, who passed me off to 571-272-7701, who then said it should be answered at 571-272-9797, the original number called. Calling central reexam at 7705 from the outside just gets a busy signal. Perhaps the patent office should adopt the slogan of mutual funds: "past performance is not an indicator of future returns."
January 5, 2011
The evidence herein is anecdotal, but the pattern is unmistakable: an incompetent BPAI decision is overturned by the CAFC. Glatt Air Techniques had one of its particle coater patents, 5,236,503, rejected over obviousness in reexam by a third-party requestor. The patent office can't tell the difference between prevention and a remedy. That pretty much sums up the Kappos regime's continuing failure of core competence for quality examination: rejection as prevention, leaving only appeal to the Court for remedy. Pathetic that the USPTO cannot recognize an invention, which thereby damages the sole mission of the patent office: to grant worthy patents.
April 14, 2010
The rampaging incompetence of the USPTO is dammed only by appeal to the courts. Time and again, the PTO's "broadest reasonable interpretation" of claims is hell and gone from reasonable. Case in point: 4,944,514, owned by Suitco Surface, which got a hard buffeting from the patent board in reexam, but reprieve from the CAFC.
January 19, 2010
"Believe it or not, in our patent office -- now, this is embarrassing -- this is an institution responsible for protecting and promoting innovation -- our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system. This is one of the reasons why the average processing time for a patent is roughly three years." - President Obama
January 8, 2010
However one may wish the USPTO well, they certainly are stingy bastards, seemingly bent on cheating their constituency, inventors, at every turn. Herein, Wyeth has to fight all the way to the CAFC to get their patent legally extended because the patent office was tardy in allowing a grant. This episode is a sad comment on David Kappos, early in his tenure at the helm of the agency.
December 31, 2009
Broken: The USPTO
This begins a series on what is wrong with patents in this country. The constitutional goal of patents is "to promote the progress of science and useful arts." But patents present irrepressible contradictions of purpose by the players of the patent game, and the pursuit of self interest by the players reveals their flaws and limits. Which is to say that the room for improvement would fit the several elephants of what is obviously wrong, but seldom acknowledged by those involved. Aside from incompetence, which weighs in heavily, two factors stress the patent system: politics and money. Let's begin with the place where patents are birthed: the patent office.
December 12, 2009
The USPTO proves itself a political creature (again) with a pilot program to fast-track so-called green technology patent applications. "Every day an important green tech innovation is hindered from coming to market is another day we harm our planet and another day lost in creating green businesses and green jobs," spouted agency Director David Kappos. 3,000 applications, out of 770,000 pending, are deemed green enough.
Posted by Patent Hawk at 10:10 PM | The Patent Office
November 15, 2009
Heritage of the Heretic
In the ultimate backfire, political hack Jon Dudas has left his mark on the patent office. Dudas demeaned the PTO by being openly hostile to its bread-and-butter clientele, patent applicants, with proposed rules that would limit claims and even applications, in a banal attempt to address pendency. Challenged by Dr. Triantafyllos Tafas, with GlaxoSmithKline riding shotgun, the district court shot the agency down. The PTO appealed.
November 6, 2009
Inventors and small companies, flush with money burning a hole in their pockets, regularly file an excess of crappy patent applications. Belatedly recognizing this inviolable fact, the patent office now promises to shoot you in the head faster if you'll shoot yourself in the foot first.
Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos has announced the agency intends to launch a pilot program that will give small entity inventors having two or more patent applications currently pending greater control over the priority in which their applications are examined while also reducing the backlog of unexamined patent applications pending before the USPTO. This pilot will allow a patent application from a small entity to receive special, accelerated status if the applicant is willing to abandon an application that has not been examined. [USPTO press release]
September 4, 2009
To characterize USPTO examination quality over the past 20 years as uneven would be a complimentary understatement. 'Good enough for government work' would be more like it, with 'shoddy' pithily on-point. In the 1990s the PTO granted reams of junk patents, creating a political firestorm as the junk hit the litigation fan. In the past few years, the reaction by a politicized patent office has been a sphincter of parsimony: not granting patents for deserved inventions. Herein a case in point.
August 4, 2009
Jorge Tayler was mistakenly $10 short on his patent maintenance fee payment. The USPTO later declared his patent dead because of it, in violation of its own rulebook, the MPEP. "The PTO was arbitrary and capricious in its failure to notify Mr. Taylor of the minor insufficiencies in his attempted payment of a patent maintenance fee," so ruled the CAFC (2009-1133). The patent office does this sort of thing habitually: taking fees and then unreasonably denying the action for which the fee was paid, as well as refusing refund.
August 2, 2009
6,310,269 claims a tampon with a solid fiber core denser than radially projecting ribs, the ribs being narrower at their base at the core than at their distal ends. McNeil, the patent holder, requested reexamination based upon an uncited Japanese patent application. The examiner rejected the claims over the prior art, and the BPAI agreed. McNeil appealed to the CAFC.
July 11, 2009
Peers on Hiatus
The Peer-to-Patent pilot project is now closed. From the Peer-to-Patent website:
The USPTO has closed the Peer-to-Patent pilot and is no longer accepting new applications. Applications already in the system will continue to be processed.
More than 70 applications still await review, and it is rumored that the program is only temporarily closed - until a full evaluation of the impact of the project can be performed.
USPTO examiners are the butt of many a joke on this blog, and often for good reason, receiving the respect they deserve. But, many examiners fulfill an essential need. They act as underappreciated civil servants that help promote the progress of this country, in a job that is tedious, monotonous, and often unfulfilling. Some even recognize the huge social responsibility that rests on their shoulders, and use this as the vehicle that propels them forward day in and day out. To those examiners - thank you.
July 9, 2009
Mismanagement at the USPTO gets a thumbs up from Congress. The House went along with the Senate in passing a bill Tuesday that would let the PTO rob its trademark kitty to tide over its dwindling patent piggy bank. In a politically inspired balk (from mega-computer/software companies whining about being incessantly hammered for infringement), the patent office has been rejecting patent applications with religious fervor in recent years, grievously wounding the goose formerly known for laying golden eggs. In an ironic twist of a concept called accountability, the Congressional measure includes a surcharge to punish patent-pleading goslings. If people everywhere would all simply agree that the old ways are the best, none of this would be necessary.
July 7, 2009
The USPTO is doing its bit to boost patent prosecutor income while dashing applicant hopes. Thanks to unprecedented rejection rates, appeal filings have spiked 70% this year: 10,870 appeals this fiscal year to 6,385 last year. The PTO cites "controlling case law" as the reason. Appeals are the most expensive bit of prosecution, running to thousands of dollars, with complex appeals costing tens of thousands. The fruits of appeal have soured - in fiscal 2008, 44% of appeals resulted in issuance, down from 66% five years ago, and 71% in 2000.
The CAFC has granted en banc rehearing of Tafas & GSK v. Doll, over the PTO proposed continuation and claims limitations. The order did not state why it had decided to take another gander. In the first round, to general dismay, the CAFC panel ruled 2-1 that the rules were merely procedural, not substantive, overturning the reality-based verdict of the district court. The CAFC had found the continuations limits contrary to the law (35 U.S.C. § 120), although one could suppose, based on CAFC logic, little substance to that as well. Consistent as a drunken monkey, there's no telling what the entire CAFC might come up with in its round 2 decision.
Posted by Patent Hawk at 10:51 AM | The Patent Office
June 26, 2009
Convenience of Coincidence
Decisions made at the UPSTO have ironically spawned an anti-patent culture at the very institute created to protect innovation. These decisions have consequences. Conveniently though, the US economy has tanked, providing the PTO with a thick sheet of smoke to help veil countless managerial missteps. Knowing his role as smoke machine, Acting Director John Doll recently provided a financial update of the patent office, transferring blame and hoping for a bailout.
June 21, 2009
The fix is in. Movers and shakers in the patent community are falling down squirting over Dave Kappos as USPTO honcho. CongressDaily reports praise from Senate Judiciary Chairman Patrick Leahy and Commerce Secretary Gary Locke (as if a cabinet member is going to toot another horn on his President's pick). The man tried-and-tested at running the PTO into the ground, the irrepressible "Foley & Lardner attorney Jon Dudas, who served as PTO director in the Bush administration, said Kappos is an excellent choice." "The Coalition for Patent Fairness and Innovation Alliance, which have been at odds over pending legislation, both backed Kappos."
June 18, 2009
President Obama announced today nominees for two related governmental posts: Director, Office of Civilian Radioactive Waste Management, Department of Energy; and Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Warren F. "Pete" Miller, Jr., a part-time Professor at Texas A&M University, got the easier job. Managing the real radioactive waste went to David J. Kappos, who, as long-time corporate mook, has shaped IBM patent policy, publicly spouting horse hockey in the process. People have been known to rise to a position, garnering dignity. Let's hope these boys are up to the job of containing the waste.
June 15, 2009
USPTO Beta Site
The USPTO has released a new beta version of its website, "redesigned to improve the look and feel, as well as to enhance the user experience with improved navigation." While the new site is not yet entirely up to date, the layout appears much improved over the current dreadful design. Feedback may be submitted via Google moderator.
June 12, 2009
Appeal of Appeal
Patent allowances are way down, hence appeals are way up. Since January, the BPAI backlog has nearly doubled to over 10,000 pending appeals. At the current rate of 500 disposals per month, the backlog would take over 20 months to eliminate, not accounting for new appeals that are being filed at a rate 2 1/2 times faster than the Board's disposal rate.
May 23, 2009
Gene Quinn relates insight from Mark Malek, fellow attorney at Zies Widerman & Malek, who spoke recently with an anonymous examiner who "told Mark that about 2 weeks ago management told the examining corps that they need to start issuing patents." Possibly a bit of sunshine in an otherwise dreary era at the PTO.
May 14, 2009
The backlog in the USPTO is one enormous statement of managerial incompetence. Nothing more. Singularly, what the Office has sorely lacked, and still lacks, is competent leadership. Jon Dudas was the Dubya of patents. For both, this nation is paying an incredible price, and will for years to come. Unless and until effective management is on board, with its eye on the ball of examination quality, and all that entails, all the other recommendations are stillborn to spurring solutions.
April 13, 2009
The USPTO is battening the hatches for the turbulent waves of the current economic storm. Herein, today's "USPTO Weekly Extra - Budget Update: Supplemental on Training and Other Issues."
April 10, 2009
Acting Director John Doll sent this memo around the shop: "As you know, the USPTO has made a number of difficult budgetary decisions this fiscal year. Among these challenging decisions is that to limit - as detailed in the attached memorandum - even revenue-generating overtime. All Patents production, revenue-generating overtime will be limited, effective Sunday, April 12, 2009."
March 23, 2009
A patent is a piece of intellectual property, a mortgage granted by the patent bank, the USPTO. The patent bank has failed, owing to managerial ineptitude. Will mismanagement hurtle it towards fiscal dilemma and further alienation of its mortgage holders, or will it turn the corner, back to a more historical norm?
March 20, 2009
The CAFC considers most everything a matter of law. Substance/facts are a legal inconvenience best boxed so that the entire container can be subject to rule-of-law disposition. With that mindset firmly entrenched, a confusion between substance and procedure is natural. So it was in Tafas v. Doll, formerly Tafas v. Dufas. At least the CAFC still ponders whether rules conflict with laws, though "consistency with the Patent Act is not the touchstone of whether the rules are procedural or substantive."
March 5, 2009
Roberta Morris of Stanford Law School has prepared a mock application form for Director of the USPTO. It's nicely done, and misses the large point. Whatever checkboxes of experiential minutiae a Director candidate may claim, the challenge is conceptual, and managerial. Does a candidate really understand what the patent office is supposed to do - namely, carefully inspect applications, so as to grant based upon merit, within the boundaries defined by statute and case law? Not treat patents as a political hot potato, as Dudas did. And does the candidate have a sense of resource, rule, and people management, to optimize productivity while not succumbing to production-line mentality? All the experience in the world won't clue someone conceptually clueless, and a relative patent greenhorn with the right headset might do just fine.
January 31, 2009
Whatever the USPTO proposes for deferred examination (DE), and it surely will, the likely outcomes won't amount to a hill of beans. As a salve to pendency, DE as a dud is an easy bet.
January 29, 2009
John Doll isn't treading water as interim PTO honcho. He's busting a move to not bust a move examining patents. On a web page titled "Closing of the United States Patent and Trademark Office," the USPTO announced a "public roundtable discussion" February 12, about adopting a procedure for deferred examination, "in response to suggestions from stakeholders in the intellectual property (IP) community" who want to tread water. [Federal Register pdf]
January 7, 2009
'Peter Principle' Poster Boy Moves On
USPTO Director Jon W. Dudas is rumored to be resigning. Since taking office in July 2004, Dudas has displayed unprecedented aptitude for infantile outbursts against PTO employees and patentees; instilling opacity in agency operations enviable to Soviet apparatchiks; astonishing duplicity in diminishing patent quality while paying lip service to it; illegal, albeit futile gestures in changing examination rules; slave-driving employees with counterproductive production goals at the expense of decent examination; bodacious benign neglect of patent pendency, a tacit admission that the PTO is a lousy place to work, and nothing to be done about that except frenzied hiring; and roiling the patent community into a state of nonplus. Dudas will be sorely missed by commentators needing blog fodder.
January 6, 2009
Examiners consistently rely on baseless rejections, hoping applicants won't realize examiner ignorance, explore examiner incompetence, nor argue against examiner authority. Often, applicants amend or file RCEs, allowing examiners to milk applicants for all the counts they're worth. Rarer is the filing of an appeal brief, which can force examiners to abandon the charade and reopen prosecution. For rejections that actually make it to the board of appeals, and are subsequently overturned by the BPAI, it may be thought that allowance is in store. But Dennis Crouch shone light on the fact that, about 20% of the time, examiner stubbornness lives on, even after being shot down by the board.
December 25, 2008
The U.S. Chamber of Commerce shows it knows how to stew analytic gumbo - its recommendations for the USPTO seamlessly blend fact and fiction.
December 17, 2008
Asokkumar Pal looked away from the screen and wiped his eyes. He was tired. He'd been with the agency 25 years. A long haul. Now it had crumbled away, as if he was a wad of paper, to be used and tossed. It wasn't right. He did the best he could. His resolve stiffened. He would not go quietly.
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.
December 5, 2008
Dead Man's Hand
Lame duck USPTO lawyer James Toupin did his best to sew a silk purse from a sow's ear in oral arguments at the CAFC today, in USPTO v. Tafas & GSK. Of course, anyone who will say anything to win arguments is oxymoronic to having integrity. In this case, the disgraceful USPTO argued that its rules to limit continuations are piddling, while the reality is the rule changes are substantial, and the likely impacts considerable.
December 4, 2008
The USPTO rules changes successfully challenged by Dr. Tafas and GlaxoSmithKline head to oral arguments before the CAFC Friday. The beetles in the patent office rolling their dung ball up the hill this far practically defines the difference between determined cunning and intelligence.
November 27, 2008
Hal "The Snoop" Wegner: "The PTO has systematically suppressed access to its internal decisions. Anecdotal evidence suggests that access to petitions decisions would reveal widespread practice violations by Examiners, sometimes upheld by Technology Center Directors as well. [There is a] PTO burial of key information amongst tens of thousands of at best difficult to access petitions decisions, as well as a cover-up of PTO delay in reaching decisions on petitions in patent (as opposed to trademark) matters."
November 20, 2008
Throw the confetti; break out the champagne; the USPTO has finally achieved perfection. According to the USPTO's FY 2008 Performance and Accountability Report, the PTO has met 100-percent of its performance goals. We can all stop worrying about poor examination quality and dishonest mis-management, because this is perfection baby!
November 18, 2008
With USPTO Deputy Director Margaret Peterlin vamoose, John Doll steps in, with Deputy Commissioner for Patent Operations Margaret ("Peggy") Focarino filling Doll's erstwhile Commissioner for Patents chair. Effective immediately. Both Doll and Focarino have been with the Office for over 30 years.
November 17, 2008
Pay to Play
New 37 CFR § 11.8 now requires an annual $118 "practitioner maintenance fee," payable in advance, for all registered USPTO agents. Penalty for non-payment is suspension. Pro se prosecutors are still scot free.
Posted by Patent Hawk at 5:43 PM | The Patent Office
November 12, 2008
Patent practitioners take note. As of September 15, committing any crime, including those of immodest moral turpitude, such as being caught for commercial engagement of prosecution in your pants, can result in revoking your "privilege" to prosecute before the USPTO. Even a driving violation conviction must be reported to the PTO.
October 27, 2008
Down The Road Kill
The USPTO proposed rules on information disclosure statements (IDS) and on applications with Markush claims will not be published as final rules by the current Administration, PTO Deputy Commissioner for Patent Operations Margaret Focarino announced last Friday.
October 18, 2008
One might naively imagine that the patent office would encourage patenting, and seek to offer its clientele, namely inventors and patent prosecutors, every advantage. Today's USPTO is quite the opposite. In this episode, the patent office is caught stealing patent term, unlawfully limiting the duration of patent grants.
Posted by Patent Hawk at 11:46 AM | The Patent Office
October 16, 2008
Let's Do It Our Way
The USPTO has filed a reply brief in appeal for its righteous battle to enact its Final Solution, changes limiting extravagance on claims and continuations. According to the brief, a rehash of earlier cogent and compelling arguments, the rules are consistent with the Patent Act, and are within the Office's rulemaking authority. If there is a difference between "substance" and "procedure," which the PTO does not perceive, the rules are merely procedural.
October 12, 2008
Straight from the horse's mouth: "here at the USPTO, we got nothing but bad apples". Reflecting on end-of-year examiner performance ratings, USPTO upper management sputtered "that it wasn't possible that the agency had that many outstanding employees".
September 28, 2008
World War II was coming to an end, Bing Crosby was playing on the radio, and Patent Office Commissioner Casper W. Ooms was professing:
It has been brought to my attention that the practice prevails [in] the Patent Office of measuring the "amount of work accomplished" by Assistant Examiners during particular periods of time by assigning quotas of production.... This practice necessarily emphasizes quantity rather than quality of work.
Posted by Mr. Platinum at 12:13 AM | The Patent Office
September 2, 2008
Patents become a public nuisance when worth a pretty penny. Hal Wegner thinks the price tag of infringement should have flamed the NTP patent reexaminations. "With a $600 million plus settlement in one litigation coupled with ongoing litigations against other alleged infringers, BlackBerryGate represents a billion dollar... patent tax on the public. Yet, the reexamination drags on... and on... and on." Having granted patents, found valid through the fire of litigation, the PTO ought to burn the midnight oil to staunch further enforcement. "A fiasco," Wegner laments.
August 24, 2008
The Power of Arsy
Patent examiners have been getting a bad rap in the patent blogosphere. Insults attacking their competence, work ethic, intelligence, moral character, and English skills are flung. In moments of weakness, this author has occasionally chimed in. But examiner incompetence should not be so easily disparaged. It should instead be respected and appreciated as better than the alternative.
August 19, 2008
In a shocking, unprecedented ruling, one branch of government stands up for another. Cooper Technologies had a continuation patent subjected to inter partes reexamination. Cooper carped that wasn't kosher, as the original (first) application was filed in 1993, and the law stated that "the inter partes reexamination procedure is available for "any patent that issues from an original application filed in the United States on or after" November 29, 1999." Apparently paid by the word, the CAFC reminded Cooper that "original" was just a word, subject to interpretation, and government agencies, such as the USPTO, have interpretation presumption on their side.
August 18, 2008
Hal Wegner cited "an informed source" that John Doll is likely to be the Acting Director of the USPTO in 2009, upon the expected departure of political hack and pathetic sack Jon Dudas. "A nonstatutory arrangement between Commerce and the PTO makes the Commissioner for Patents the Acting Director in the absence of a superior political appointee."
August 14, 2008
The USPTO has promulgated its final rule for CFR changes of authorized activities and sanctions for patent and trademark agents. The comments warn that being a patent agent does not cover activities, not necessary to prosecution, which would constitute practicing law.
Posted by Patent Hawk at 9:20 PM | The Patent Office
August 13, 2008
With breathtaking alacrity for legislative enactment, President Bush signed into law revision of 35 U.S.C., the patent law, and the Trademark Act (of 1946), transferring authority of appointing administrative patent and trademark judges to the Secretary of Commerce. An unconstitutional 1999 law had let the USPTO director appoint the judges. Further, the Commerce secretary may retroactively repair the breach by waving a wand of approval over the current crew of judges.
Posted by Patent Hawk at 5:53 PM | The Patent Office
August 11, 2008
Business as Usual
The hoary adage "where there's smoke, there's fire" seems to apply. Law.com reported on USPTO favoritism for RIM and against NTP during their lawsuit, with apparent continuing punishment of NTP by malign neglect.
August 7, 2008
Just the Fax
The USPTO "is proposing to revise the rules of practice to limit the types of correspondence that may be submitted to the Office by facsimile." The successful 1988 trial program is now deemed not so successful. The office recommends its web-based EFS (Electronic Filing System). [from the Federal Register]
August 6, 2008
Considering that USPTO management spawns from Congressional aides, payback in the form of a junket to Copenhagen, Denmark should raise eyebrows only for its destination, not its blatant toadying. The Washington Post:
"The purpose of the trip," Jefferson D. Taylor, chief of the USPTO office of congressional relations, says in his invite, sent to aides on the Senate and House Judiciary subcommittees on intellectual property, "is for discussions on issues related to intellectual property rights" and such and to "meet with local patent and trademark office representatives, members of industry" and American businessmen in Denmark, and -- our favorite -- to "visit with students and staff of the Copenhagen Business School, University of Denmark."
August 4, 2008
The USPTO has unveiled a new electronic "portrait gallery" "highlighting past and present individuals who have made a contribution to America's intellectual property (IP) system." Included are "digital electronic portraits of United States Presidents Thomas Jefferson and James Madison; famous inventor Thomas Edison; National Inventors Hall of Fame Inductees Helen Free, who developed home testing for diabetes, and Steve Wozniak, the inventor and co-founder of Apple Computer; and Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas."
July 29, 2008
USPTO Deputy Director Margaret J.A. Peterlin is throwing in the towel, not a day too soon. From the PTO announcement:
In addition to enhancing operational efficiencies, Deputy Under Secretary Peterlin strategically positioned the USPTO as a leader in such important policy debates as patent modernization legislation, in which the USPTO played a lead role in forming and communicating the Administration's position.
July 18, 2008
A recently published UPSTO Federal Register Notice regarding paperwork burdens for the proposed appeals rule change is oddly missing from all PTO lists of Federal Register Notices. The wafting scent is that this is something more than oversight, instead, a continuation of a two-year trend of failing to give sufficient notice of opportunity for public comment.
Posted by Mr. Platinum at 2:45 PM | The Patent Office
July 16, 2008
The USPTO is extending and expanding its Peer Review pilot program. While the original pilot was limited to "computer-related arts," the program is porking to eat business method applications too. 400 possible published applications will sweat it out under public grilling, up from the original 250. The pilot is extended for another year; now scheduled to end June 15, 2009.
Posted by Patent Hawk at 2:02 PM | The Patent Office
July 7, 2008
Peer-to-Patent declared itself a success in its First Anniversary Report. Self flattery had patent blogger praise piled on. The hoopla is not entirely unmerited. What a great concept: the patent community contributing back to the patent system, examination quality improving with an influx of peer-cited art, and pendency decreasing without the PTO lifting a finger. Sounds like a win-win-win. Too bad we don't all live in Tuvalu, where scalability would not be an issue.
June 24, 2008
In their June newsletter/sobfest, POPA reiterates concerns over proposed changes to the PTO telework program. The proposed changes would eliminate the one-hour-per-week in office requirement for examiners, but would require examiners to cover all costs when traveling to the PTO headquarters on an "as needed" basis. POPA's concern: malicious supervisors interpreting "as needed" as "as wanted".
June 16, 2008
One Forward, Two Back
The US patent system is unraveling as the USPTO desperately clings to the telework thread as a last hope for reducing pendency. POPA reports that "management has proposed legislation which would allow the agency to permit employees to telework from anywhere in the United States". Yet POPA laments that this latest effort "would not require the agency to pay for employees' travel when the agency requires them to report to USPTO headquarters" and that "management also wants to pay telework employees according to the locality in which the employees actually live and work".
Praise be to Kevin E. Noonan at Patent Docs for follow-through on the low-down of the apparent improprieties by the dastardly Dudas and the USPTO in the NTP v. RIM litigation and reexamination.
Posted by Patent Hawk at 10:43 AM | The Patent Office
June 15, 2008
Answers, Of A Sort
Criticism of the USPTO has reached comical proportions, and the joke is on us: inventors and prosecutors. When there is a universal howl from the U.S. patent bar about the agency, while the PTO itself crows about a lurch down in allowance rate, and a federal court rules that the PTO acting illegally, you may think something afoot. Joff Wild of IAM Magazine, sitting comfortably across the pond in merry old England, wonders.
June 9, 2008
Broadside criticism of individual examiners doing their daily tasks should be out of bound (sic) and, a fortiori, spineless, anonymous criticism of individual examiners by a practitioner either crosses an ethical or disciplinary line - or such a line should be sharply drawn to deal with such reprehensible conduct.
May 12, 2008
In The Weeds
Rep. Howard Berman, Chairman of the House subcommittee overseeing the USPTO, does his job in an April 29 letter to PTO Director Jon Dudas, demanding answers: did you sully the agency's reputation by consorting with RIM when it was under the gun from NTP, and you had NTP patents under reexamination?; why haven't you considered deferred examination?; explain inconsistencies in patent application projection for the future; document methodology in meeting application demand; why so pig-headedly clueless about examiner attrition?; justify managerial lurching in its various incarnations. One surmises from such inquiries that, under Dudas' direction, the PTO hasn't exactly been on the path of probity.
May 8, 2008
Posted by Patent Hawk at 1:04 PM | The Patent Office
May 6, 2008
An Inconvenient Truth
The New York Times gives pesky perfectionist professor John F. Duffy his 15 minutes of fame. Duffy had the temerity to finger the criminal gang commonly known as Congress for passing a law in 1999 letting the USPTO director appoint appeal board judges. Only one thing wrong with that: it's unconstitutional.
April 30, 2008
Jon W. Dudas, USPTO numero uno: "We are getting more and more unpatentable ideas, worse and worse quality applications." Craven worm lying through his teeth, or imbecile trying to impress the rubes? You be the judge.
April 28, 2008
CAFC Judge Linn wondered out loud last week about the quality of BPAI, the patent appeals board. Small wonder. Last year, John Duffy opined that a 35 U.S.C. §6, enacted in 1999, is unconstitutional under Article 2. The 1999 Act allowed the PTO Director to appoint BPAI judges, but Article 2 requires that such "inferior" officials be appointed, at the least, by a department head, which the PTO honcho is not. Translogic took up the cudgel, petitioning the Supreme Court after the CAFC demurred. It's an easy bet that SCOTUS won't weigh in.
Posted by Patent Hawk at 7:21 PM | The Patent Office
April 20, 2008
Avoiding Consistency Traps
"A foolish consistency is the hobgoblin of little minds." -Ralph Waldo Emerson
At Patent Prospector, we're not shy about speaking out when we see academics, business people, or government officials doing silly things. Because of that, it's really a pleasure to be able to give kudos to the same people when praise is deserved. I believe that the new pilot program designed to promote Examiner interviews before first Office Actions is an excellent idea, which PTO Director Dudas and his team deserve praise for trying out.
Posted by Michael Martin at 1:03 PM | The Patent Office
April 17, 2008
Lazy Man Insults His Customers
The USPTO is storing up trouble. PTO honcho Jon Dudas said Wednesday that patent applications are "skyrocketing," but quality is suffering "as corporations and individuals increasingly seek to turn intellectual property into a legal asset rather than a means to technology innovation."
April 15, 2008
The USPTO is hosting a webcast on Wednesday, April 30, 2008, at 3:00 p.m. ET "to discuss recent disruptions in the availability of Public PAIR" owing to "service disruptions caused by bulk downloading of data by the public, commonly referred to as 'data mining.'" Details.
April 14, 2008
The above title reads like junk email in a foreign language that your computer can't decipher. How appropriate, because that's the name of the USPTO's new curriculum to teach rug rats about intellectual property. i-©®eaTM educates educators to educate "tweens" (ages 8-11) "to be creative and invent." Like they don't get into enough trouble as is. To launch the program, the agency has radio and TV commercials with the message, "Anything's possible. Keep thinking." Hey PTO, how about something crazily creative, like "examination on the merits"?!
April 10, 2008
Is There An Echo In Here?
David Boundy, IP VP at Cantor Fitzgerald, burned the midnight oil to rail against USPTO rule changes, using the proposed Markush rule revision as a springboard. "The Markush Rule violates the Patent Act." Boundy thereupon listed further PTO legal transgressions for all its recent rule changes, insisting the PTO must start again from scratch. "Further action by the PTO is illegal until it has made some good faith attempt to comply with the law."
April 9, 2008
Budens On The Real Deal
Back in February, USPTO Director Jon Dudas testified before Congress as to the "progress" of the agency. The PTO press release offered up a mirage banquet of statistical successes. The April newsletter of POPA, the patent office union, dishes out the testimony of POPA president Robert Budens, who slices through Dudas's claimed "success." Ah, finally, some unbiased declarations.
April 7, 2008
Another Day, Another Pilot
A recently announced USPTO pilot program will allow students, from several hand-picked law schools, to gain real-world experience by practicing before the agency. It is difficult to imagine this endeavor continuing beyond the initial two-year pilot. The value of such a pilot therefore appears minimal, acting more as a diversion from bad publicity than as an earnest effort.
Figure of Speech
USPTO Director Jon Dudas pulled a number: $4200, as the cost of examining a patent, contrasting it to the "basic filing fees" of under $1,000. So how, with such a seemingly losing formula, does the PTO make over $2 billion a year? Issuance and maintenance fees. The issue fee for a granted patent is $1,440. Maintenance: every patent, at 3.5 years, chips in $930, $2,360 at 7.5 years, and $3,910 at 11.5 years. Not to mention fees for continued examination (RCE, $810) and appeal ($1,020). Citing just the basic filing fee disingenuously sets up a false comparison. Consider it a statement of character.
April 4, 2008
If I Were the Dude...
Complaints abound when discussing the patent system and current PTO mismanagement, with top gun Jon "the Dude" Dudas serving as the rear-end to many swift kicks. But being Director of the USPTO during such a volatile period cannot be easy. So let's follow Peterlin's lead, and help a brother out. No MBA required.
April 1, 2008
Judge James C. Cacheris in the Eastern District of Virginia, on killing the examination limits railroaded into existence by the USPTO:
Because the USPTO's rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as "otherwise not in accordance with law" and "in excess of statutory jurisdiction [and] authority." 5 U.S.C. § 706(2).
March 30, 2008
In an interview with C/Net News, USPTO Commissioner Jon Dudas:
What's, in lots of ways, more disturbing is in over half the cases where we say this isn't patentable, people just file again and get back in line. We want to make certain that people can't apply with a very broad patent application, which they know will get rejected. And then they get back in line, and meanwhile, they're looking out and seeing what's happening in the market. Sometimes they see that if they focused that broad claim, it could cover an existing technology... Then, (going by) the date of first filing, they can then say, 'I own that technology'... That's a very real concern. That gets more in line with concerns of troll behavior--someone who is literally watching the technology...so they can rise up out of the bridge and sue people.
March 28, 2008
Every competent manager knows, if you have a morale problem with the troops, step one is simple: ask the troops. Instead, Margaret Peterlin, Deputy Doodah for the USPTO, is tickled pink to ask the kids in a local bidness skool what they think.
March 23, 2008
WikiPatents and the USPTO-condoned Peer to Patent projects are attempts at solutions looking for a problem. The implicit conjecture is that patent examiners are limited in their search capabilities, and a helping hand is just what they need. Nothing could be further from the truth. By fostering the impression that examiners need such help, a fake Band-Aid is applied in the wrong place. The wound is PTO management.
Posted by Patent Hawk at 1:50 AM | The Patent Office
March 22, 2008
Praise the Dudas
Joff Wild of IAM Magazine praises Jon Dudas for bringing home the bacon: "What the Patent Prospector and other Dudas critics fail to acknowledge is that fee diversion has ended on his watch." Wrong attribution.
March 20, 2008
Don't Feel So Restricted
From MPEP 802.02: Restriction practice is designed to require applicants to "elect a single claimed invention (e.g., a combination or subcombination invention, a product or process invention, a species within a genus) for examination when two or more independent inventions and/or two or more distinct inventions are claimed in an application."
March 19, 2008
Fully Funded Again
The Senate last week, by unanimous approval, slipped into its 2009 budget an amendment to condemn diverting funds from the USPTO. The Senate version of the budget is sliced and diced in April, but PTO funds won't be on the plate. That means the USPTO 2009 budget will exceed two billion dollars.
February 27, 2008
Myth tells us that fish grow to the size of their tank. Reason suggests, related to a USPTO examiner, this myth may prove out.
February 22, 2008
With USPTO allowance rates at an all time low, there has been frequent analysis and speculation regarding cause and implication. There is a player in the shadows: the supervisory examiner.
February 8, 2008
In the Eastern District of Virginia today, savvy Judge James Cacheris heard oral arguments on whether the USPTO may implement its proposed examination rules changes. The crucial issue is whether the changes are substantive, which they are. Textbook interpretation is that the patent office is proscribed by law from promulgating substantive changes, and from applying them retroactively, as in this instance. The sanctimonious PTO argued that the changes were not substantive, but if even they were, the agency had authority. Judge Cacheris swore to render decision ASAP, but "there is a lot of paper to consider."
February 7, 2008
The organized crime syndicate known as the USPTO tried to thwart input in its fight to implement its illegal rule changes to examination practice. The attack is answered.
Despite representing to this Court several times that the administrative record was complete, the PTO itself demonstrated otherwise when it recently and belatedly supplemented the administrative record, not once but twice. These submissions establish a pattern of "deliberately or negligently" omitting adverse documents from the record.
February 5, 2008
Patent Office on Patent Reform
USPTO management posted on its internal agency website a position statement concerning changes in pending patent law. The patent office strongly opposes damages apportionment, while supporting the new post-grant opposition regime.
January 28, 2008
Fighting Criminal Action
Last week, Triantafyllos Tafas filed an opposition brief to the USPTO's summary judgment motion in the matter of stopping implementation of the agency's proposed rules limiting patent filings and examination. Tafas backed with evidence alleged lies and cover-up by PTO management in its totalitarian approach to rulemaking.
January 14, 2008
The Perils of Prosecution
With proclivity to despotic rule-making, USPTO management has issued edict to trash examination to the lowest common denominator. Playing the numbers to demonstrate its toughness, top management determination was to sink the allowance rate. Many moons ago, anticipating outcry at examination injustice, the agency geared up for a ramp in appeals. Outrageous incompetence is in full flower at the PTO. The governmental agency representing the sanctity of invention has been so corrupted as to soil itself in disgrace; in doing so, pointing out the woeful neglect of its overseers.
The PTO failed its procedural rulemaking obligations. The PTO asserted that certain documents did not exist; yet now they have suddenly appeared in the administrative record. The PTO’s procedures are “suspicious” at best, and suggest that the “administrative record” is not an accurate or representative record of open-minded and reasoned decision making, but rather an ex post collection of documents cherry picked for this litigation.
December 27, 2007
A patent embodies a simple concept of private property, that of invention. Those opposed to the concept rage against it in vicarious ways, to weaken its power, as the concept itself endures. Ironically, current USPTO management tries to shuck its core responsibility of patent examination, by contriving elaborate rules and justifications to render its sloth less odious. The patent office's self-destruction has cheering supporters.
December 14, 2007
Unable to staff its way out of its pendency hole, USPTO management seeks to address the problem by limiting continuations and RCEs. Seeking to gratify a grotesque bias, Ayal Sharon & Yifan Liu set out to statistically validate that conclusion. Instead, they proved what many prosecutors already knew: examiners' refusal to grant deserved patents. The root of the problem is a culture now steeped in political fear of being considered slack by granting junk patents, inspired by a short-sighted and incompetent management responding to pressure from well-funded propagandists.
December 12, 2007
What's the big IDeaS?
The Office of Management and Budget has approved the proposed Information Disclosure Statement (IDS) rule changes (full proposed rule). As poet Walt Whitman penned: "Do I contradict myself? Very well then, I contradict myself. I am large, I contain multitudes." But the USPTO isn't supposed to be poetic, or self-contradictory; it's supposed to grant valid patents. Worrying about decreasing pendency sets up an inherent self-contradiction, especially since the direct path to do so is closed: while management clings to denial as to cause, the agency admittedly suffers horrendous examiner turnover. So, the only way left to decrease pendency is to decrease examination time. Decreasing examination time necessarily increases the risk of granting patents badly: either erroneously granting junk patents, which the office used to regularly do, to not granting what should be valid patents, as the PTO has recently made its regular practice. Burden shifting to applicants is no substitute for impartial examination, and that's exactly the spirit of the proposed IDS rules.
December 10, 2007
Can't Touch This
Mere days after Margaret J.A. Peterlin was appointed Deputy Director of the patent office, before she even had a chance to prove herself an incompetent nincompoop, she's attacked in court by a self-righteous goon squad of do-gooders who don't want to give her the chance to prove herself an incompetent nincompoop. But the government isn't to be held accountable, and so a district court judge shucked the matter because the law is "vague."
November 20, 2007
The Big Charade
The USPTO released last week its fiscal year 2007 "Performance and Accountability Report", praising itself for "achieving another record-breaking year in performance." The numbers: a record number of patents "examined" = 362,227; quality compliance = 96.5% (what the hell is that?: dotting the 'i's and crossing the 't's, a triumph of nitpick over substance); BPAI upholding examiners 69% of the time (an intra-agency highly symbolic number), up from 51% in 2005, indicating how much better the PTO has stacked the deck against applicants; and grants down to 51% from 72% in 2000, as if, nationwide, patent attorneys' heads turned to mush as they suddenly spewed garbage patent applications left and right. Yeah, right. All puppet performance, no accountability.
November 19, 2007
The Examiners' Burden
In March 2005, USPTO management unilaterally terminated the collective bargaining agreement it had reached with POPA, the examiners' union. Thus began a new round of negotiations, which, in a letter Monday to examiners, is considered at a mid-point impasse. As POPA put it: "The agency has taken a number of positions that are very harsh towards examiners."
November 16, 2007
Part Of A Winning Team
An examiner at the USPTO commented about Margaret J.A. Peterlin, Deputy Director, "another Hill staffer that has been sent over here to manage the PTO. There has been some griping by examiners and SPEs about her qualifications and her abilities." Peterlin is a former lapdog for Illinois Republican Rep. Dennis Hastert, an erstwhile wrestling coach.
November 15, 2007
Victory at Sea
The USPTO announces success in increasing pendency: up to 32 months. Director Jon Dudas, in a phone interview, crowed: "In the near term, we'll see pendency grow for a few years." The Congressional Government Accountability Office credited agency management with unrealistic production goals fostering massive examiner turnover. Meanwhile, the patent grant percentage is down to 51% from 72% in 2000, as applicants clog the office with their crappy ideas.
Posted by Patent Hawk at 11:55 AM | The Patent Office
November 8, 2007
Ruthlessly incompetent USPTO management continues to flummox the patent community with its illegal and outrageous rule-making. The latest episode is revising appeal rules. Public comments have been posted, none complimentary; worthwhile reading. But, however compelling, you can't clue the clueless. In other words, don't hold your breath that the patent agency won't proceed apace in yet another rules-from-fools folly.
November 7, 2007
I Swear Tele-Works
Deputy Director of the USPTO, Margaret J.A. Peterlin, testified before a House of Representatives committee in a hearing entitled "Telework: Breaking New Ground."
From the patent office announcement:
The USPTO has long been recognized as a pioneer in the area of telework for its innovative and flexible programs.
November 2, 2007
Attrition is atrocious at the USPTO. Why? Having paid my dues to play the blues as an examiner, a few notes sing out.
October 31, 2007
The Empire Strikes Out
Judge James Cacheris of the Eastern District of Virginia issued a last-minute preliminary injunction against the USPTO imposing its new rules limiting continuations and claims examined, finding merit that at least some of the rule changes may be illegal, exceeding statutory authority.
Posted by Patent Hawk at 7:45 PM | The Patent Office
October 30, 2007
The Empire Strikes Back
On November 1, 2007, the USPTO expects to implement rules aimed to improve the quality and efficiency of patent application examination, lead to higher quality patents, and reduce a growing backlog of applications that is crippling the Office. The rules are the product of extensive planning and development.
Last Thursday, Senator Chuck Schumer (D-NY) faxed a letter to PTO honcho Jon Dudas, raising concerns about the imminent rules for limiting continuations and examination of claims: "The proposed rules... may have the unintended consequences of stifling... innovation, and I urge you to consider delaying their implementation."
Posted by Patent Hawk at 2:19 PM | The Patent Office
October 29, 2007
Patent prosecutors will be tricked or treated before All-hallow-even, as East Virginia Judge James Chacheris has scheduled a hearing Wednesday to hear GlaxoSmithKline's motion for an injunction against the USPTO's odious examination rules changes, the day before the rules are set to go into effect, establishing a pagan ritual of patent sacrifice, beginning All Hallows Day. The patent community cheers GSK in hopes of securing a temporary restraining order from Judge Chaceris, whose choice of hearing date intimates a just complaint.
October 27, 2007
Twenty months ago in your role as the Solicitor for the United States Patent and Trademark Office you addressed the Bar Association of the District of Columbia; you spoke against a statutory elimination of excessive continuations applications because of an Agency "bubble" problem, while asserting that the Congress would clearly support repeal of multiple continuing applications – that your former Agency is now eliminating through rulemaking you helped craft in your former role.
October 25, 2007
Reports flow in of siege at the USPTO fortress over examination limits. Casualties have already occurred: the twin angels of human relationships, Equity & Comity, appear seriously wounded. The large caliber catapult known as IBM has rolled into position, lobbing projectiles at the fortress. Now we hear that a defector is whispering dissent, that the cause may not be just, aghast at the thought of innocent lives, infant inventions strangled as they lie in their cradles.
October 22, 2007
Richard B. Belzer, on behalf of masked men, ran numbers from masked men that led him to conclude that the USPTO's proposed prior art Information Disclosure Statement (IDS) rules related to the pending 5-25 examination rules are economically significant, contrary to patent agency assertion. As in, $7.3 billion a year significant. As former Senator Scoop Jackson of Washington state once mused: "a billion here, a billion there; before you know it, you're talking real money."
October 19, 2007
Stopping Limiting Continuations Continued
Inventor Dr. Tafas was first to the courthouse to sue Jon Dudas for the new examination limits, specifically, limiting continuations. GlaxoSmithKline followed suit. Steven J. Moore at Kelley Drye & Warren, Tafas counsel, informs that "the Glaxo case has been consolidated into the Tafas case." Tafas has filed an amended complaint. And Hal Wegner analyzes the justifications, and pitfalls, of late-stage continuation filings.
October 18, 2007
Susan Dudley, Administrator of the Office of Information and Regulatory Affairs (OIRA) for the Office of Management and Budget (OMB), overseer of regulatory shenanigans by government agencies, is a bad mother to the errant child known as the patent office; letting it eat far too much cake of its own baking for everybody's own good. Ms. Dudley was the one who let the examination limits rules slide on by without so much as a "boo." Now comes a crowd of community-minded citizens to complain once more, that Dudas the Menace is fibbing again; this time over new rules for requiring Information Disclosure Statements (IDS) for patent submissions: "In the proposed IDS Rule, USPTO has again misrepresented to OMB the breadth and depth of the effects likely to result. The proposed IDS Rule is clearly “economically significant.” If finalized, it will impose billions of dollars of burden on patent applicants and owners."
Revenge of the Jedi
It is virtually impossible to find anyone outside the Patent Office who thinks the new rules on claims and continuations schedule to take effect on November 1, 2007, make any sense at all. The new rules are simply absurd. Not only do they limit the number of claims unless you want to file an Examination Support Document, but they also limit the number of continuations you can file and they are retroactive. On top of that there has been some evidence to suggest that the Patent Office started enforcing the new rules in mid October 2007, although they appear to have seen the error of their ways and have stopped such enforcement. Who could possibly think that any of this is fair?
October 17, 2007
Feeling the pressure of pendency no longer, the bowels of the USPTO are tightening for the 5/25 examination limits, with the patent agency prematurely playing loose with its own rules. While the limits are stated to be in effect November 1, de facto implementation is already proceeding, as it appears unexamined patent applications with more claims than allowed under the new rules are being pulled from their dockets, effectively pre-retarded.
October 11, 2007
GlaxoSmithKline is attempting to vaccinate inventors from the examination limits pandemic about to hit, which inexorably will lead to digestive distress and headaches for prosecutors, as well as depression for inventors who cannot adequately protect their inventions. GSK's medication was injected in the Eastern District of Virginia on Tuesday against Jon Dudas as USPTO honcho.
October 9, 2007
Slapping a happy face on a dressing down, the patent agency carries the torch of the recent GAO report dunning them for not slapping a happy face on examiners so they'll stay working at the USPTO, and for not hiring enough examiners to meet workload. An internal office website posting has USPTO Director Jon Dudas praising the GAO report.
Posted by Patent Hawk at 5:08 PM | The Patent Office
Examination Limits Briefing
Examiners have just been briefed on the examination limits. The USPTO PowerPoint presentation, available here, serves as an excellent walk-through of the impending rules, with, naturally, occasional agency spin.
Posted by Patent Hawk at 4:53 PM | The Patent Office
October 5, 2007
As pendency has ballooned, USPTO management has been pushing a crack-the-whip production system for examiners which has met stiff resistance from POPA, the examiner corps professional organization. Now the oversight GAO fingers the PTO for ignoring the burgeoning backlog in its hiring goals, and not adequately addressing examiner attrition: culprit #1 - production goals.
October 1, 2007
Incompetence takes two basic forms. One is lacking skill to implement: a lack of craftsmanship. Implementation incompetence is, at best, low aptitude. The other is inability to conceptualize: a lack of comprehension. You can't clue the clueless. Incompetence thrives at the top tier of the USPTO, and it is damaging our country.
September 27, 2007
Reeking of nasty anti-patent bias, evidence of high-level incompetence at the USPTO trickles in. Today, the appeals court caught the patent appeals board (BPAI) equating "flexible" with "rigid."
September 14, 2007
Accelerated examinations, where an applicant provides rigorous self-examination of a patent application, is largely replicated in the Examination Support Document (ESD) that allows exceeding the "5/25" examination claims limits being imposed by the USPTO. The experiment of accelerated examinations is proving an abysmal failure for those involved. Hal Wegner mouths off about USPTO management "shortcomings" and abrogation of law by fiat.
Posted by Patent Hawk at 9:47 PM | Prosecution
September 7, 2007
Searching BPAI Decisions
Posted by Patent Hawk at 12:38 AM | The Patent Office
September 6, 2007
Jon Dudas, USPTO head honcho, will serve a heaping of justification for, and explanation of, the new examination rules, and doubtlessly be griddled for it, in a panel web conference sponsored by Foley & Lardner: Wednesday, September 12, 9:30 am ET. Spatulas are limited, so register ASAP.
Posted by Patent Hawk at 12:19 AM | The Patent Office
September 4, 2007
Hal Wegner tears into the USPTO's proposed wanking of Markush claims. "Above all, the proposed rulemaking unduly complicates and frustrates biotechnology and pharmaceutical applicants from obtaining fair coverage for their pioneer innovations."
Posted by Patent Hawk at 10:41 PM | The Patent Office
August 23, 2007
As Nutty As Squirrel Poo
Having attended the USPTO webinar on the new rules limiting examination, said limits applying both to the number of continuations/divisionals/RCEs for a patent family, and claims examined within each patent family, the interplay intricacy aimed at confounding prosecutors and thereby hobbling invention by said rules leads inexorably to a singular conclusion: my head hurts.
Posted by Patent Hawk at 12:02 PM | The Patent Office
Instantly taking umbrage at the USPTO's new Byzantine rules for limiting examination, uppity Greece-born inventor Dr. Triantafyllos Tafas filed suit in the home court of the PTO, the Eastern District of Virginia, against the agency and its head honcho, Jon Dudas. According to Tafas, the new rules violate the Constitution, the Patent Act of 1952, and, in the run-up to promulgation, the rule-making procedures of the Administrative Procedure Act (APA).
Posted by Patent Hawk at 11:37 AM | The Patent Office
August 16, 2007
The patent office is running a pilot program of sending electronic office actions, using Private PAIR, with notification by email, replacing the paper version. The USPTO is letting a limited number of new participants into the program beginning August 31. This initiative looks a winner in terms of convenience for all involved, and is likely to be an option for all prosecutors in the not too distant future, when the pilot successfully concludes.
Posted by Patent Hawk at 6:21 PM | Prosecution
August 9, 2007
The USPTO announces a "Complex Work Units (CWUs) Pilot Program" scheduled to begin towards the end of the year. The agency seeks volunteer participants to provide input and feedback. The goal of the project is to better figure out how to regularize complex figure and table data, such as used to illustrate chemical structures, mathematical formulae, and protein crystals.
July 30, 2007
The USPTO today published an extensive revision of the rules governing ex parte patent appeals, where an applicant's patent has been invalidated by the new, "leave no patent alive" obviousness regime imposed by the Supreme Court's KSR decision. Given that the majority of potential pre-KSR high-value patents may be no longer be enforceable, the patent office is expecting a crush from those trying to hold on to what they no longer have got.
July 25, 2007
USPTO Rule Changes
The patent office is proceeding towards the details of implementing its rule changes for limiting continuations and number of claims examined. An internal (intra-agency) email follows.
Posted by Patent Hawk at 12:18 PM | The Patent Office
July 10, 2007
The Office of Information and Regulatory Affairs (OIRA) within the Office of Management and Budget (OMB) concluded review of proposed USTPO rules related to examination procedures, blithely approving them as "consistent with change." OMB views the rule changes as economically insignificant. No one else does.
Posted by Patent Hawk at 11:36 AM | The Patent Office
July 3, 2007
After the U.S. patent office turned a deaf ear to relentless criticism of its proposed rule changes, OMB became the last resort to stop the PTO from limiting continuations and lessening examination quality. OIRA, the regulatory branch, has been the focus to date. As a last resort of the last resort, the budget branch is now assailed to have some sense.
Posted by Patent Hawk at 12:16 PM | The Patent Office
June 26, 2007
Hal Wegner reports: The notorious proposed PTO rules that have generated truly unprecedented negative responses from the patent community remain in limbo but with a substantial chance that the new rules will be implemented. Despite serious discussions with personal interviews with OMB by at least five different groups, there has been no indication given that the OMB will block the PTO's rulemaking efforts.
Posted by Patent Hawk at 6:22 PM | Prosecution
June 23, 2007
Two groups representing diverse interests met with officials from the Office of Management and Budget (OMB) at the White House on June 14 & 15 to thwart the patent office's proposed rule changes to limit continuations and change examination procedures. USPTO thoughtlessness and misconduct at the highest level of management appear egregious.
June 21, 2007
Michael Bender's involvement in an invention promotion scheme got him excluded from USPTO prosecution. He fought his exclusion all the way to the appeals court (CAFC 06-1243). If only Bender had been so diligent on behalf of the people he represented.
June 16, 2007
A Blow Against the Empire
The USPTO pseudo-secret rules package to limit continuations goes forward, but not without resistance. These rules were self-interestedly concocted by short-sighted patent agency management. An attempt to stop the rules from going into effect is being made by going over the heads of patent agency management.
Posted by Patent Hawk at 12:38 PM | The Patent Office
June 14, 2007
Seven years as a pro se prosecutor, and what stands out most, now more so than years before: examiners tend to be sloppy, particularly mapping prior art to claim locutions (let's not call them limitations). Why? The crush of time. Patent agency management seems to liken patent examination to sorting the mail - quality just has to do with shoving it out the door. Examiners know that patent quality is a function of having time to do a good job. What we have here is a failure to communicate.
Posted by Patent Hawk at 10:53 AM | The Patent Office
June 10, 2007
Hal Wegner writes of the qualifications of recent USPTO management, elevation of title belying comparative depth of experience.
Posted by Patent Hawk at 10:45 AM | The Patent Office
June 7, 2007
The USPTO proudly announces it Peer Review Pilot program, beginning June 15, letting a limited number of applicants volunteer their computer technology patent applications for target practice by the prior art packing public.
Posted by Patent Hawk at 1:10 PM | The Patent Office
June 6, 2007
Do Some Work For Us
Patent office director Jon Dudas testified before the Senate this morning, complaining about patent examiners having to examine patents - it was just too much work. "There ought to be a shared responsibility for patent quality among the patent office, the applicants and the public."
June 4, 2007
Another Bite with a Fresh Rabbit
Giving large corporations every opportunity to treat the patent system as their own private reserve, the USPTO will give Microsoft another chance to invalidate the Eolas web browser plug-in patent, which Microsoft was found to have expensively infringed with its ActiveX technology. This episode, provoking an interference, Microsoft pulls a rabbit out its hat that claims that it, Big Genius, invented the technology, not the puny patentee.
Posted by Patent Hawk at 1:19 PM | The Patent Office
March 26, 2007
Winning the War
While we are winning the war in Iraq by gentle persuasion that touches the hearts and mind of the whole world, other governmental efforts are also reaping the fruits of benevolence. Today, USPTO director Jon Dudas launches his five-year agency-wide Strategic Plan, with the goal of becoming "employer of choice." Row, row, row your boat to the PTO.
Posted by Patent Hawk at 10:44 AM | The Patent Office
March 2, 2007
Continuation Limits Undead
A couple of days ago, Hal Wegner reported USPTO Under Secretary Jon Dudas putting nails in the coffin of earlier proposed continuation restrictions. Now it appears continuation restrictions are undead.
Posted by Patent Hawk at 10:48 AM | Prosecution
February 28, 2007
Continuation Limits Dead
Classic gossip chain: Hal Wegner reports from "a highly reliable source" that USPTO Under Secretary Jon Dudas, in a swing through Silicon Valley last week, assured computer industry leaders that the proposed limits on continuations are, "in the words of one observer" - "dead as a doornail."
Posted by Patent Hawk at 4:50 PM | Prosecution
February 19, 2007
Bernard Bilski helped the USPTO set up an appeals court review of statutory subject matter - 35 U.S.C. §101. Bilski claimed a method of economizing in managing risk; more simply, simply a method of doing business. Self-admittedly, the claims aren't tied to any physical structure, don't recite a transformation of matter, nor even of computer data. The patent appeals board rejected Bilski's claims as unpatentable. A case with considerable intrigue, it raises the question of whether the patent office is attacking its pendancy problem by attempting to scotch business method patents.
Posted by Patent Hawk at 5:13 PM | § 101
February 7, 2007
USPTO In The Dough
President Bush recommended that the USPTO keep its piggy bank for the fourth straight year. If approved by Congress, the USPTO budget for 2008 would be around $1.9 billion, up 8% from 2007.
Posted by Patent Hawk at 12:16 AM | The Patent Office
December 21, 2006
Lessening the post office load, the USPTO has initiated a pilot program of office action (OA) email notification, letting an applicant know that the action may be viewed via Private PAIR.
Posted by Patent Hawk at 11:10 PM | Prosecution
November 30, 2006
USPTO management secured a 7% across-the-board pay raise for examiners effective the last pay period of the year.
Posted by Patent Hawk at 12:00 AM | The Patent Office
November 19, 2006
USPTO management insists on cracking the whip, destroying morale among examiners in the name of productivity.
Posted by Patent Hawk at 12:01 AM | The Patent Office
November 10, 2006
USPTO management continues to display astounding disregard for both patent quality and retaining patent examiners. Agency management's current proposal to slam examiners is flat-goal production quotas.
Posted by Patent Hawk at 12:06 AM | The Patent Office
November 7, 2006
One of the 6,000 patent examiners is selling on eBay the commemorative keyring that was provided as an end-of-fiscal-year gift to PTO employees. The keyring was only half of the gift; the other half was a chicken kabob pita sandwich. No word on the whether there was pity for the pita.
Posted by Patent Hawk at 12:59 PM | The Patent Office
That USPTO top management are Republican troglodytes should come as no surprise; their "the floggings will continue until morale improves" management style gives them away. A Democratic Congress could lame some of the agencies "reforms," such as limiting continuations.
Posted by Patent Hawk at 12:51 AM | The Patent Office
November 1, 2006
Patent pendency isn't just for examination any longer. The spirit of Soviet Union bureaucracy, already embraced by USPTO management, has infected their online web service, EFS. At least the agency is sending out emails acknowledging a problem.
Posted by Patent Hawk at 8:22 PM | Prosecution
October 22, 2006
Patent Pendency Pending
The deck chair shuffling on the ship of patent pendency revealed a bit more configuration clarity this past week. IDS & ten-claim limits in, continuation limitations out. No sitting place in evidence for concern about patent quality.
Posted by Patent Hawk at 11:27 AM | The Patent Office
October 1, 2006
The Denver Business Journal, in an article largely about Denver possibly hosting a satellite office of the PTO, reported last week: "About 3,000 people work as patent examiners...They're hiring a thousand examiners a year, and they still can't keep up with demand... The heavy workload has resulted in an attrition rate as high as 30 percent for first-year hires."
Posted by Patent Hawk at 7:59 PM | The Patent Office
September 29, 2006
To Be Continued?
Rumors are swirling that the patent office may be rethinking its continuation curtailment campaign. Also rife is speculation of shuffling the deck chairs on the Patent Titanic. Some scuttlebutt at the agency water cooler....
Posted by Patent Hawk at 8:05 PM | The Patent Office
September 5, 2006
Cindy Michel got a patent for ergonomically engineered underwear: 5,157,793. But the patent maintenance fees didn't fit her, so she bitched before the U.S. Court of Federal Claims, silly girl. Regardless of whether the emperor has clothes, ergonomic or not, Cindy lost her patent for not paying for its maintenance.
Posted by Patent Hawk at 11:23 PM | The Patent Office
August 31, 2006
There has been acrimonious disagreement at the Patent Office over the Millennium Agreement, a 2001 contested contract that was supposed to maintain a 10%-15% pay scale differential between examiners and your average government bureaucrat; the point being, to retain highly educated and skilled examiners, thus minimizing turnover and maximizing patent quality. It hasn't worked out that way, because agency management reneged.
August 25, 2006
Average patent pendency is now at 27 months, with high-tech wait times nearly double that. Some inventors have waited 12 years before getting their patent grant. There is a serious shortage of examiners, and turnover is high: only 45% of current employees have been there for over five years. But the patent office has a plan for the next five years.
Posted by Patent Hawk at 2:41 PM | The Patent Office
August 3, 2006
Dilbert at the PTO
As a confidential source inside the patent office put it, "When I worked in the private sector, I might not have always agreed with management, but at least I saw evidence of some consistent internal logic for their reasoning and decision. But here at the PTO, it's like working in a live-action Dilbert cartoon, although with a more relaxed dress code."
Posted by Patent Hawk at 12:45 PM | The Patent Office
July 27, 2006
Posted by Patent Hawk at 10:54 AM | The Patent Office
July 26, 2006
There is a surging wave of research in nanotechnology - a catch-all for tiny structures with broad applicability in other technologies. In other words, nanotech is a catalytic technology, possibly seminal in this country maintaining its competitive edge internationally. In that regard, one big problem is the USPTO.
Posted by Patent Hawk at 12:10 AM | Patents In Business
July 20, 2006
USPTO Management Lambasted
Posted by Patent Hawk at 3:20 PM | The Patent Office
July 15, 2006
Young Punk Wanderlust
Examiners harp that employee turnover at the patent office results from the regime and conditions imposed upon them; the common story when any organization suffers high attrition. But, according to office management, newly hired Millennial-generation examiners leave, not for better pay or less stress, but owing to professional wanderlust, itself a hallmark of their generation. Agency employees in their 20s were amused to read of their presumed mores.
Posted by Patent Hawk at 10:40 AM | The Patent Office
July 12, 2006
PTO Web Chat Snafu
Today's intra-patent office news: "Because of technical difficulties with our software program, today's web chat on telecommuting programs with Under Secretary Dudas was suspended." Over 300 people had logged in for today's chat.
Posted by Patent Hawk at 7:24 PM | The Patent Office
July 11, 2006
The House Ways & Means Select Revenue Subcommittee is holding hearings Thursday into patents claiming tax processes. The worry is whether such patents contribute to tax avoidance (as in: duh), and whether it could make the IRS's job of blocking tax shelters more difficult.
Posted by Patent Hawk at 10:19 PM | The Patent System
July 8, 2006
The First Patent Office Building
The July issue of the Smithsonian magazine has an interesting article titled Back To The Future on the history and recent renovation of the original patent office building.
Posted by Patent Hawk at 4:55 PM | The Patent Office
June 12, 2006
PTO Inequitable Conduct?
NTP continues to pitch a fit over alleged shenanigans by the U.S. patent office in reexamining the NTP patents that netted $612.5 million from RIM.
Posted by Patent Hawk at 7:57 PM | The Patent Office
May 20, 2006
Cracking The Whip
In a push to have pendency punk'd, the whip comes down at the patent office. As Lynyrd Skynrd put it, "what's that smell?"
Posted by Patent Hawk at 1:10 AM | The Patent Office
May 16, 2006
Patent Office Corruption
NTP alleged that Research in Motion (RIM) sought to illicitly influence the patent office's reexamination of NTP patents during the NTP-RIM patent spat that finally settled with RIM paying NTP $612 million. Sure, RIM chief Jim Balsillie is that kind of guy. But, according to NTP, top officials at the patent agency, including USPTO head Jon Dudas, violated federal rules in colluding with Balsillie, and, naturally, trying to cover it up.
February 22, 2006
Patent Office Blows Patent Reform Raspberry
Patent Commissioner John Doll's viewpoint on the need for Congress to pass patent reform legislation: no thanks, we've got it under control. To patent applicants, Doll says: "do some work for us."
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.
January 4, 2006
The USPTO is aiming to cut its backlog by limiting continuations. The patent office is burden shifting, at the potential sacrifice of fertile inventors losing some of their patent rights.
Posted by Patent Hawk at 2:09 PM | Prosecution
December 17, 2005
Patent Office Plays Politics
Defying its own regulations, the patent office is only giving NTP 30 days, instead of the customary 60 days, to reply to the non-final rejection of its patents in the re-examination initiated by infringer Research in Motion (RIM). In case you just dropped in from another planet, NTP sucessfully sued RIM for patent infringement, and RIM has been fighting that reality tooth and nail.
December 8, 2005
2005 USPTO Annual Report
The U.S. Patent & Trademark Office has issued its annual report for 2005. Here's a look at some of the more interesting findings for patents.
Posted by Patent Hawk at 1:02 AM | The Patent Office
May 15, 2005
The Constitutionality of Robbing The Patent Office
"The Congress shall have Power... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;"
- U.S. Constitution, Article 1, Section 8, Clause 8
Posted by Patent Hawk at 2:23 PM | The Patent System
May 13, 2005
Did A Mid-90's PTO Hangover Incite Patent Reform A Decade Hence?
The evidence is anecdotal. Patent examination may have been particularly slack in the early to mid-1990s, which perhaps resulted in a rash of flimsy patent enforcement cases in the past several years that have incited catcalls for patent reform to remedy the granting of weak patents. But that stalking-horse is already back in the barn.
Posted by Patent Hawk at 12:02 AM | The Patent Office