Posts Tagged “PTO problems”

I know we are just past the holiday period – you know, peace on earth and good will toward men – but a couple of recent office actions have me convinced that patent examiners are anything but men of good will. How do they annoy me… let me count the ways I’ve seen in blogs etc.:

1) rejecting a claim with a “bouyant” flap because a similar flap in the prior art was a hydrofoil and therefor rose toward the surface [uh…only when moved through the water!]

2) rejecting a claim with a “translationally stationary” scanning element because a prior art scanner, which moved across the surface of an object, disclosed “a translational stationary scan mechanism with respect to said surface” – wait for it now – “in the vertical direction”. [Emphasis added]

3) rejecting a claim with a remote [microwave] imaging element because “as a radar guy” he thought the system doing the imaging OF the remote element.

4) rejecting an invention with removable legs because, the examiner stated,“the legs of [the prior art reference] are capable of being removed, even if it requires a blow torch.” [Emphasis added.]

5) Rejection of an invention that involved flexible padding because, again, with enough force even a steel plate is flexible. [Emphasis added.]

6) Rejection of a processing system that used a browser applet because the examiner equated the client-server relationship to a terminal on a mainframe.

The good news is that these dumb rejections are (generally) overcome

The bad news is that overcoming them costs you, the inventor, money. Either in extended examination costs (i.e., having to have your attorney file an “RCE”, a request for continued examination) or by going before the patent office’s board of appeals.

In any case, these stupid examiner tricks are the result of bad management at the PTO, where examiners are not judged by the quality of their examinations (as measured at least in part by the validity of their office actions).

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In my previous post I indicated that Jaffe and Lerner’s suggestion of doing away with patent examination and the presumption of validity for an issued patent that goes with it – essentially changing patents into registration-only documents, as is the case for copyrights – might not be a bad idea after all.

But of course times have changed since they made that suggestion (2004) and the problems we have today are different from what they addressed then. Then, the problem was that anything could be patented; now the problem is that even good inventions have to fight inane, illogical, and unfair office actions at significant extra expense to the applicant.

Also, Jaffe and Lerner’s suggestion did not fix the problem they identified (poor examination); all it did was push “examination” down the road to a more expensive venue where, it was assumed, only “valuable” inventions would end up. The rest of the inventions, presumed not valuable because no one needs to enforce them, would be registered and make nice wallpaper. This latter presumption is flawed, particularly for the small entity.

The final flaw in their suggestion is that it is inconceivable that it would ever be implemented. The idea that Congress would ever change the fundamental definition of a patent is inconceivable.

Rather than try to change what a patent is, let’s make the process of getting a patent conform to the stated goals of the patent system. It is the patent examination process that is flawed, not the definition of a patent. Let’s fix the problem by changing the problem’s source. Incidentally, fixing the examination process can, for the most part, be achieved without legislative action.

There are two goals for the patent system: on the one hand, the system is intended to reward inventors who advance the state of “science and useful arts”, on the other hand the patent system is intended to provide the benefits of such an advance to society by adequately disclosing the advance in the patent specification. The primary function of the examination process, then, is to determine, by a reading the specification, whether the inventor has indeed made a significant enough advance to science and the useful arts to merit awarding a limited time monopoly on the invention, and whether the advance is disclosed clearly enough in the specification that other workers can make use of the advance.

I believe that the only way to achieve the goals of the patent system is to have an examination process that seeks the truth about the invention’s quality and that ensures that the specification explains the details of the invention. A model for such a process exists today, not in the patent world, but in the publication of academic research. In theory, if not in practice, the editor and reviewers for an academic journal are supposed to read a manuscript to determine both the value and originality of the underlying research AND whether the presentation in the manuscript is clear and complete enough that other researchers can try to replicate the results.

Without pretending to understand the “back story” of how we got here, it is clear to me that the current examination process, far from being an evaluation of the value and clarity of the invention and specification respectively, is instead an exercise in intentional obfuscation on the part of many applicants and an exercise in semantic gamesmanship on the part of many examiners. Patent examination is not supposed to be an adversarial process, but it is clear that, at almost every turn, applicants are wary of admitting or explaining anything, for fear it will be used against them and examiners seem intent on finding a word or phrase in the independent claims that they can use to cite obviousness or anticipation, even where there is none.

This process must change.

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Just over a week ago the PTO announced the start date of their latest attempt at improved service:  the “Track One” prioritized examination program, which was scheduled to begin May 4, 2011. Of course, this $4000 shakedown to deliver the service the PTO should have been delivering anyway would have benefited larger/better funded entities to the detriment of the rest of us.

Today, however, PTO Director Kappos announced that Track One was off-track for now, supposedly due to the deficit reduction provisions in the recently passed budget bill. Several other planned service improvements have also been put on hold. According to Kappos:

Effective immediately and until further notice:

  • Track One of the Three-Track program, which offers expedited patent examination and was scheduled to go into effect on May 4, 2011, is postponed;
  • The opening of the planned Nationwide Workforce satellite office in Detroit, as well as consideration of other possible satellite office locations, is postponed;
  • Hiring—both for new positions and backfills—is frozen;
  • IT projects will be scaled back;
  • Funding for Patent Cooperation Treaty (PCT) outsourcing will be substantially reduced;
  • Employee training will be reduced;
  • All overtime is suspended.

In addition, business units will be required to reduce all other non-compensation-related expenses, including travel, conferences and contracts.

Arguably part of the problem is that the PTO is not run as a self-supporting independent agency – the operating budget of the PTO is determined by Congress, independent of the fees collected. Thus, the six-month-late budget that just passed limited the PTO’s plans without regard to whether these new activities would be budget-neutral.

In any case, the hiring freeze, the overtime suspension, the reduced IT improvements, and the reduced employee training can only make matters worse for anyone trying to obtain a patent.

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In April I mentioned that there was a constitutional challenge facing the PTO; that many of the Board of Patent Appeals and Interferences decisions might be nullified because many of the administrative judges sitting on that panel were, arguably, appointed unconstitutionally.

Apparently Congress and the President think they can wave a magic wand and retroactively make unconstitutional appointments okay. Wilmer-Hale reports:

On August 12, 2008, President Bush signed into law a statute intended to fix a perceived constitutional flaw in a 1999 statute governing the appointment of administrative law judges… Both the 2008 statutory fix and the 1999 statute raise constitutional questions of potential significance to those relying on BPAI or TTAB decisions issued over the past several years.

Wilmer-Hale further explains that the statue has 3 major provisions: first, giving the Secretary of Commerce the authority to appoint the administrative judges; second, giving the S of C the right to retroactively appoint a judge who had been appointed [arguably unconstitutionally] by the Director of the USPTO, effective on the date of the Director’s action – essentially waving a magic wand to make the unconstitutional appointments suddenly constitutional AND the decisions of the past 10 years valid; third, adding explicitly that the judges were de facto acting as judges and therefore their rulings can be accepted as valid (essentially because everyone at the time accepted the rulings as valid and it would be chaotic to go back and retry every case, given that the results would be the same, just with a now constitutionally appointed judge).

Don’t you wish you could solve your problems so easily! BTW, the 2nd and 3rd major provisions of this statute will probably also be challenged, so the PTO has only won this round.

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