Why only one RCE?
yp
under the new rules. What is the reasoning behind this?
The reason why RCEs were useful is because of the US practice to issue
a final rejection after the first action. This gives no opportunity to
present a further amendment to the claims, except by filing a
continuation or an RCE. The latter was the simplest way to continue
with the case.
Unfortunately, the examiner often issued another final rejection after
the RCE and again to continue with the prosecution one had to file
another RCE.
My questions are:
If in a pending application, one has already filed an RCE, can one
file a further RCE after Nov. 1 without petition and showing?
If in a pending application, one has already filed an RCE, can one
file a continuation (or two) after Nov. 1 without petition and
showing?
yp
Steve Marcus
"yp" <yp...@hotmail.com> wrote in message
news:1191589766....@w3g2000hsg.googlegroups.com...
>I am very surprised that after Nov. 1, only one RCE will be allowed
> under the new rules. What is the reasoning behind this?
>
> The reason why RCEs were useful is because of the US practice to issue
> a final rejection after the first action. This gives no opportunity to
> present a further amendment to the claims, except by filing a
> continuation or an RCE. The latter was the simplest way to continue
> with the case.
>
> Unfortunately, the examiner often issued another final rejection after
> the RCE and again to continue with the prosecution one had to file
> another RCE.
>
> My questions are:
>
> If in a pending application, one has already filed an RCE, can one
> file a further RCE after Nov. 1 without petition and showing?
No. See Section D in this link:
http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/ccfrfaq.pdf
>
> If in a pending application, one has already filed an RCE, can one
> file a continuation (or two) after Nov. 1 without petition and
> showing?
As to continuations, see this link:
http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/transitionalpractice.pdf
>
> yp
>
Steve
--
The above posting is neither a legal opinion nor legal advice,
because we do not have an attorney-client relationship, and
should not be construed as either. This posting does not
represent the opinion of my employer, but is merely my personal
view. To reply, delete _spamout_ and replace with the numeral 3
yp
> "yp" <y...@hotmail.com> wrote in message
>
> news:1191589766....@w3g2000hsg.googlegroups.com...
>
>
>
>
>
> >I am very surprised that after Nov. 1, only one RCE will be allowed
> > under the new rules. What is the reasoning behind this?
>
> > The reason why RCEs were useful is because of the US practice to issue
> > a final rejection after the first action. This gives no opportunity to
> > present a further amendment to the claims, except by filing a
> > continuation or an RCE. The latter was the simplest way to continue
> > with the case.
>
> > Unfortunately, the examiner often issued another final rejection after
> > the RCE and again to continue with the prosecution one had to file
> > another RCE.
>
> > My questions are:
>
> > If in a pending application, one has already filed an RCE, can one
> > file a further RCE after Nov. 1 without petition and showing?
>
> No. See Section D in this link:
>
> http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/ccfrfaq.pdf
>
>
>
> > If in a pending application, one has already filed an RCE, can one
> > file a continuation (or two) after Nov. 1 without petition and
> > showing?
>
> As to continuations, see this link:
>
>
> > yp
>
> Steve
> --
Thanks, Steve. I think there will be a big increase of appeals at the
USPTO after Nov. 1.
Emma Anne
> I am very surprised that after Nov. 1, only one RCE will be allowed
> under the new rules. What is the reasoning behind this?
>
> The reason why RCEs were useful is because of the US practice to issue
> a final rejection after the first action. This gives no opportunity to
> present a further amendment to the claims, except by filing a
> continuation or an RCE.
I have been wondering this as well. Is the patent office so bored that
they want a passel of appeals to keep them busy? Because that will be
our only recourse if the Examiners continue to be so quick on the draw
with final rejections. I have hope that they will not be (so quick with
finals), since the last Appeal I filed took forever and the last Reexam
took even longer (so I think they don't have staff for a bunch more -
unless they are planning to hire a bunch of people?)
Steve Marcus
"Emma Anne" <emma...@mac.com> wrote in message
news:1i5ibz7.db5pw1jfm4i5N%emma...@mac.com...
Hmm...
You get to file an original application, two continuations/or CIPs and one
RCE. I respectfully suggest that if you can't get adequate patent coverage
after all of that, then there are a number of potential reasons why, and
none of them have anything to do we PTO wanting more appeals.
It always amazing me to listen to practitioners complain about how examiners
are incompetent to turn out proper actions, yet folks don't appeal those
incompetent rejections. Instead, they file continuations. It also amazes
me how practitioners complain that examiners abuse final rejection practice,
yet there a few petitions filed.
yp
> "Emma Anne" <emma_a...@mac.com> wrote in message
I think that continuations, CIPs and RCEs are used for rather
different purposes.
Thus, continuations are most often used when some claims have been
accepted while others finally rejected. Then, if one wishes to
continue to prosecute the rejected claims, he files a continuation
containing the same while having the accepted claims issued as a
patent. Such continuation may have amended claims by means of a
preliminary amendment, with proper argumentation. Very often, the
examiner will issue a final action against such continuation
application, and if one wishes to further amend the claims, an RCE can
then be filed. Presently, however, no RCE would be allowed if one had
already been filed in the original application.
RCEs are normally filed when all claims are under final rejection,
rather that going to appeal, which is lengthy and costly for the
client. They constitute an attempt to persuade the examiner that
slightly narrowed or amended claims are worthy of patentability. Some
RCEs are successful, particularly if, after discussing the case with
the examiner, one arrives at an agreement. But in most cases, the
examiner will issue another final rejection, and under the new rules,
there won't be much choice than to drop the case or go to appeal.
The CIPs, of course are filed only when new matter has to be
introduced to overcome some objection of the Examiner.
Now these three extension possibilities have been lumped together, but
with very specific restrictions as to how to use them, for which I
don't see much logic. I would have preferred to have been given, let
us say, three opportunities of extending the prosecution in each case,
while selecting our own way of doing so, be it via continuation, CIP
or RCE of any combination of the three. Such choice of action would
have been much more convenient to USPTO clients, namely applicants or
their attorneys.
Alun L. Palmer
news:foxNi.334861$dA7.1...@newsfe16.lga:
>
> "Emma Anne" <emma...@mac.com> wrote in message
> news:1i5ibz7.db5pw1jfm4i5N%emma...@mac.com...
>> yp <yp...@hotmail.com> wrote:
>>
>>> I am very surprised that after Nov. 1, only one RCE will be allowed
>>> under the new rules. What is the reasoning behind this?
>>>
>>> The reason why RCEs were useful is because of the US practice to
>>> issue a final rejection after the first action. This gives no
>>> opportunity to present a further amendment to the claims, except by
>>> filing a continuation or an RCE.
>>
>> I have been wondering this as well. Is the patent office so bored
>> that they want a passel of appeals to keep them busy? Because that
>> will be our only recourse if the Examiners continue to be so quick on
>> the draw with final rejections. I have hope that they will not be (so
>> quick with finals), since the last Appeal I filed took forever and the
>> last Reexam took even longer (so I think they don't have staff for a
>> bunch more - unless they are planning to hire a bunch of people?)
>
> Hmm...
>
> You get to file an original application, two continuations/or CIPs and
> one RCE. I respectfully suggest that if you can't get adequate patent
> coverage after all of that, then there are a number of potential
> reasons why, and none of them have anything to do we PTO wanting more
> appeals.
>
Want and get are two very different things, Steve, i.e. you may not want
appeals, but you are going to get them.
The primary reason for continuations is piecemeal examination. Your people
aren't giving us the best art in the first OA for the most part. If they
searched the invention disclosed as well as just the claims they might be
able to give us the best art first time around, which is what we honestly
want, and please don't say we should claim more narrowly initially when you
know very well we are under a duty to claim broadly to protect our client's
interests. Heaven forbid that the examiner should have to read the spec
before doing the search!
> It always amazing me to listen to practitioners complain about how
> examiners are incompetent to turn out proper actions, yet folks don't
> appeal those incompetent rejections. Instead, they file continuations.
We can't appeal until we have had two OAs, and yet the bad one is usually
the first one, then the 'real' one is made final, and we have to continue
the application so we can amend. The first one is often so bad that
amending would be pointless, which is ironic as that is when we have the
right to do so without continuing.
> It also amazes me how practitioners complain that examiners abuse
> final rejection practice, yet there a few petitions filed.
>
> Steve
This is because petitions don't toll the reply period. Beleieve me, we
would file far more petitions if it weren't a guaranteed route to
abandonment.
The system is broken, but just not in the ways that the PTO seem to think.
Alun
Steve Marcus
That's all swell. But at what point does a practitioner get together with
his/her client and discuss the $64.00 questions:
What is the narrowest claim that it is worthwhile to pay an issue fee for?
What is the broadest claim that we can reasonably expect to be allowed?
I would suggest that having received a first Office action in the first
filed nonprovisional application, (and quite often having done one's own
preexam search), the time for doing that is prior to responding to that
first Office action.
But let's say that you feel otherwise and want to take allowed narrow
claims, while filing a continuation application to pursue claims of broader
scope. Again, at what point do you and the client ultimately decide that it
is time for appeal? Does it take more than two continuations? More than
four? More than five? Why not one original application and two
continuations?
Of course, if the Patent Bar (and various other auxiliary organizations such
as inventors' groups) feel that the process _must_ include as many
continuation applications as the latter will pay for the former to file (and
the former feels like they can't make a living unless they can file a
never-ending stream of applications, then both groups should be willing to
pay fees that will support an ever increasing number of examiners (and the
technical support and the infrastructure) to support them. Or can you
suggest another alternative.
When I first started in the field, I was told that good practice was to file
an application with the broadest claim one could expect to have allowed to
the narrowest claim that it would make economic sense to pay an issue fee
for. I would suggest that this is the only rational alternative to
supporting a PTO that has to continue to grow in order to handle an
unlimited stream of continuing applications.
>
> RCEs are normally filed when all claims are under final rejection,
> rather that going to appeal, which is lengthy and costly for the
> client.
This is part of the problem. Lengthy and costly, yes. But the issue is
whether the claims that are finally rejected are necessary for the client
from an economic point of view. If not, pendency time and cost aren't
factors; why spend the money and time to procure something that isn't
necessary. Certainly, file an RCE. If, however, the breadth of protection
is necessary, and in the opinion of the practitioner warranted, then the
practitioner should recommend appeal. It is still possible to attempt to
obtain narrower claims by filing a continuation rather than an RCE. But is
it in the client's best interest to forego appeal if the claim scope in the
finally rejected application is necessary for the client?
They constitute an attempt to persuade the examiner that
> slightly narrowed or amended claims are worthy of patentability. Some
> RCEs are successful, particularly if, after discussing the case with
> the examiner, one arrives at an agreement. But in most cases, the
> examiner will issue another final rejection, and under the new rules,
> there won't be much choice than to drop the case or go to appeal.
Again, it seems to me that the better practice is to begin with an
application that includes not merely claims of a scope that are "slightly
narrowed" with respect to the broadest application claims, but instead to
include the complete rainbow, ending with the narrowest claims that can
possibly be economically worth paying an issue fee (not to mention
maintenance fees) for.
And the time to discuss the case with the examiner is after seeing the first
action. The strategy for discussing the case should be based on that first
action, and upon the predetermined knowledge of what is the broadest scope
that it's reasonable to expect, and the narrowest scope that is economically
viable.
>
> The CIPs, of course are filed only when new matter has to be
> introduced to overcome some objection of the Examiner.
CIPs should be filed when an inventor has filed a parent application, and
has later developed a patentably distinct variation. If the "new matter"
that you mean is not a patentably distinct variation, I fail to see what
overcoming an objection or rejection has to do with filing a CIP to protect
it. If it is a patentably distinct variation, I fail to see why one needs
to wait before filing an application to protect it. Indeed, one should note
that the inventor's first application can never bet prior art against the
inventor's second application if the latter is filed less than one year
after the former, even if the former issues into a patent. Thus, if the
inventor has made a patentable improvement over the original disclosure, it
would appear to be appropriate to file the application directed to that
without any benefit claim at all, and to do so as soon as possible, so that
the application is filed less than one year after the first, and with as
small a hiatus as possible to minimize the possibility of "intervening"
prior art. Note further that the benefit claim is typically irrelevant
anyway, because a claim that has the "new matter" (patentably distinct or
otherwise) in it isn't entitled to the benefit of the parent anyway.
>
> Now these three extension possibilities have been lumped together, but
> with very specific restrictions as to how to use them, for which I
> don't see much logic. I would have preferred to have been given, let
> us say, three opportunities of extending the prosecution in each case,
> while selecting our own way of doing so, be it via continuation, CIP
> or RCE of any combination of the three. Such choice of action would
> have been much more convenient to USPTO clients, namely applicants or
> their attorneys.
Unfortunately, convenience to USPTO clients carries a price tag, just as
convenience in the real world outside of the realm of intellectual property
almost always does. It has been made clear that USPTO clients cannot afford
the cost of such convenience. Hence, cold, hard reality has eared its ugly
head.
Steve Marcus
"Alun L. Palmer" <elek...@yahoo.com> wrote in message
news:Xns99C115B7ECC6...@216.168.3.50...
I think that you failed to take my point. PTO doesn't "want" more appeals,
but is more than willing to deal with them. The other side of the coin is
that PTO clients don't want to pay what it would take to support hiring more
examiners, and paying for the necessary support staff and infrastructure
(aka more office space, more of everything in the office space, etc.) to
handle the ever increasing number of applications.
>
> The primary reason for continuations is piecemeal examination. Your people
> aren't giving us the best art in the first OA for the most part. If they
> searched the invention disclosed as well as just the claims they might be
> able to give us the best art first time around, which is what we honestly
> want, and please don't say we should claim more narrowly initially when
> you
> know very well we are under a duty to claim broadly to protect our
> client's
> interests. Heaven forbid that the examiner should have to read the spec
> before doing the search!
In my opinion, you are actually under a duty to claim the broadest claim
that you can reasonably expect to be patentable, down to the narrowest claim
that it makes economic sense to pay an issue fee for.
As to the examiner reading the specification, I'm certain that the vast
majority do. However, I'm not certain that the vast majority possess
pyschic ability to enable them to foresee precisely what part of the
unclaimed disclosure the inventor/practitioner will claim to overcome a
rejection. I am 100% certain that if an application were to be filed with
five independent claims and a total of twenty-five claims, that most of the
time, a practitioner would be able to file the application with a rainbow of
claims from broadest reasonable to narrowest economically useful (can't be
readily engineered around). In the post-Festo world, one would have thought
that to be on par with an Eleventh Commandment.
>
>> It always amazing me to listen to practitioners complain about how
>> examiners are incompetent to turn out proper actions, yet folks don't
>> appeal those incompetent rejections. Instead, they file continuations.
>
> We can't appeal until we have had two OAs, and yet the bad one is usually
> the first one, then the 'real' one is made final, and we have to continue
> the application so we can amend.
Which would justify a continuation or an RCE. How does that address the
"two CONS + one RCE limitations of the new rules?
> The first one is often so bad that
> amending would be pointless, which is ironic as that is when we have the
> right to do so without continuing.
If you don't amend around the first rejection, there are two possibilities:
1) The examiner maintains the rejection and makes it final. Is there a
problem with appealing "the bad rejection" at that point (other than the
inventor and/or practitioner knowing that the claim isn't patentability,
nothwithstanding anything that the examiner has or hasn't done)? So what's
the problem with the new rule package?
2) The examiner is argued out of the rejection, but makes a new rejection.
If that's made final, it's improper and the finality can be overcome by
petitioning. You'll ultimately get a nonfinal action and at least one more
action (final if appropriate). So what's the problem with respect to the
new rule package?
>
>> It also amazes me how practitioners complain that examiners abuse
>> final rejection practice, yet there a few petitions filed.
>>
>> Steve
>
> This is because petitions don't toll the reply period.
Well, perhaps it should take three weeks, not three months, to decide that
the final is premature. Then perhaps it should take another week, not three
months, to obtain permission to file, and to file, the petition. That gives
PTO two months to decide the petition; at worst, maybe you'll need to file
an extension. Prior to doing that, you should be on the telephone with a TC
Director, who is the deciding official, politely insisting that you need a
decision prior to having to file an extension. I can almost guarantee that
if this were standard practice by practitioners, you would observe a
reduction in the number of ridiculous (my word, to which I'm entitled after
37 years) or abusive (your word) final rejections. And if the TC Directors
aren't responsive, well, they have bosses too.
There is much merit in the old adage about the squeaky wheel getting the
oil. I have heard practitioner's opine that they don't petition in order to
avoid alienating the examiner (and/or SPE and/or TC Director). I think
that's a copout. If you get abused in the department store, do you avoid
complaining in order to not alienate the clerk? Examiner's might be lazy or
incompetent or just stupid, but most are smart enough to learn which
practitioners will tolerate being abused, and which won't. Ditto for most
SPEs and TC Directors.
Beleieve me, we
> would file far more petitions if it weren't a guaranteed route to
> abandonment.
It needn't be. See above.
>
> The system is broken, but just not in the ways that the PTO seem to think.
I disagree, for the reasons set forth above. I might add that I spent quite
a number of years handling petitions for the signature of one of three TC
Directors (that is, for an entire Tech Center), and my docket was current
within one week. Ultimately, the number of petitions increased, and it was
decided that some of my colleagues would handle the petitions for their TC
Director and I would handle petitions only for my Director. I continued to
maintain my petition docket current. The reason? My TC Director was
intolerant of examiners who abused final rejection practice (and any other
practice, including restriction practice). As a result, the number of
petitions filed was easily manageable, and about 75% of the petitions were
complaining about perfectly acceptable examiner practice. The number of
grantable petitions was continuing to drop when I changed positions.
>
> Alun
Emma Anne
> "Emma Anne" <emma...@mac.com> wrote in message
> news:1i5ibz7.db5pw1jfm4i5N%emma...@mac.com...
> > yp <yp...@hotmail.com> wrote:
> >
> >> I am very surprised that after Nov. 1, only one RCE will be allowed
> >> under the new rules. What is the reasoning behind this?
> >>
> >> The reason why RCEs were useful is because of the US practice to issue
> >> a final rejection after the first action. This gives no opportunity to
> >> present a further amendment to the claims, except by filing a
> >> continuation or an RCE.
> >
> > I have been wondering this as well. Is the patent office so bored that
> > they want a passel of appeals to keep them busy? Because that will be
> > our only recourse if the Examiners continue to be so quick on the draw
> > with final rejections. I have hope that they will not be (so quick with
> > finals), since the last Appeal I filed took forever and the last Reexam
> > took even longer (so I think they don't have staff for a bunch more -
> > unless they are planning to hire a bunch of people?)
>
> Hmm...
>
> You get to file an original application, two continuations/or CIPs and one
> RCE. I respectfully suggest that if you can't get adequate patent coverage
> after all of that, then there are a number of potential reasons why, and
> none of them have anything to do we PTO wanting more appeals.
>
> It always amazing me to listen to practitioners complain about how examiners
> are incompetent to turn out proper actions,
I said nothing about incompetence. I have consistently said that most
Examiners do a very good job given their time constraints. What I said
is that they jump to final rejections very quickly. This has been the
system and if it doesn't change, it is going to be a problem.
> yet folks don't appeal those
> incompetent rejections. Instead, they file continuations. It also amazes
> me how practitioners complain that examiners abuse final rejection practice,
> yet there a few petitions filed.
>
Petitions can take a few years to be settled. Inventors would like
their patents to issue much sooner if at all possible. Still,
practitioners will certainly file appeals if they have to.
Emma Anne
> I think that you failed to take my point. PTO doesn't "want" more appeals,
> but is more than willing to deal with them. The other side of the coin is
> that PTO clients don't want to pay what it would take to support hiring more
> examiners, and paying for the necessary support staff and infrastructure
> (aka more office space, more of everything in the office space, etc.) to
> handle the ever increasing number of applications.
I can't speak for all PTO clients, of course, but certainly many of us
would be more than happy to pay for good exams. I always use the EP for
my PTO applications, because they do better searches, for example. It
isn't the practitioners (IME) who want the Examiners to have six hours
per case or whatever ridiculous amount of time it is these days.
Actually, paying for continuations and so on, feels like a way to pay
for a better examination. It's like paying for the second half, since
the original fee is apparantly only sufficient to pay for the first
half.
Steve Marcus
Steve Marcus
The problem is that with the ever increasing rate of new filings (based on
new disclosures), the ability to handle the examination of applications
cannot tolerate a never ending stream of continuing applications. Neither
can it handle a radical increase in the expected amount of time that, on the
average, an examiner can spend with an application. Hence the concept of
limiting the total number of claims based on "related" applications, and
limiting the number of continuing applications and prosecutions based upon
the same (or related) disclosures.
Frankly, I view this as the Patent Bar having made its bed (because of
unnecessarily multiplied filings and unnecessarily multiplied claims). The
chickens have now come home to roost, and unfortunately, those practitioners
who haven't had a hand in creating the problem will now, nevertheless, be
caught in the solution.
Steve Marcus
And I said nothing about _you_ personally saying anything about
incompetence. However, that is the justification advanced by most of the
practitioners I've spoken with for needing multiple continuing applications
beyond the number permitted in the rule package. Note that only three others
have commented on this thread, you, Alan and yp. Alan directly claimed that
examination is incompetent, ("Your people aren't giving us the best art in
the first OA for the most part. If they searched the invention disclosed as
well as just the claims they might be able to give us the best art first
time around, which is what we honestly want, and please don't say we should
claim more narrowly initially when you know very well we are under a duty to
claim broadly to protect our client's interests. Heaven forbid that the
examiner should have to read the spec before doing the search!") and yp
strongly implied it. That's about par for the course with respect to the
practitioners I've spoken with re this rule package.
> I have consistently said that most
> Examiners do a very good job given their time constraints. What I said
> is that they jump to final rejections very quickly. This has been the
> system and if it doesn't change, it is going to be a problem.
First, I'll reiterate what I said in response to the material quoted above
that was posted by Alan. A practitioner should be including the full range
of claim scope in the original application, from the broadest reasonably
believed to be patentable to the narrowest that it would be worthwhile
paying an issue fee for.
And I'll respond that the your comment (which echos something similar stated
in Alan's post and implied by yp) is an indirect slap at an examiner's
competence. Either the final was proper under present Office practice, or
it was not. If it was proper, yet there's patentable subject matter
disclosed that would have economic value if contained in an issued patent,
then the practitioner who has not included a patentable claim (that is, a
claim of the appropriately narrow scope) to that subject matter on filing,
or at least in response to a first Office action rejecting the claim, has
not served the client well. (How many continuations/RCEs does it take to
recover from that, if the next claims set submitted for examination would
include the narrowest claim that would be worth paying an issue fee for?)
If the final was improper, then that can be easily and timely remedied by
prompt review of the action and the appropriate timely filed petition,
followed up with a telephone call if a decision is not timely forthcoming.
>
>
>
>> yet folks don't appeal those
>> incompetent rejections. Instead, they file continuations. It also
>> amazes
>> me how practitioners complain that examiners abuse final rejection
>> practice,
>> yet there a few petitions filed.
>>
>
> Petitions can take a few years to be settled.
I disagree. It never did when I was doing them in the Technology Center,
and it doesn't where I'm doing them now (save for the very, very rare
instance when we were unaware that the petition had even been filed, and
where exactly was the practitioner in zealously representing the client by
letting the petition linger with no response, in one case for two years??).
> Inventors would like
> their patents to issue much sooner if at all possible.
And they would be more likely to be issued much sooner if at all possible if
the narrowest economically viable claims weres included in the application
as filed, or as amended in response to a nonfinal Office action.
> Still,
> practitioners will certainly file appeals if they have to.
Which is as it should be.
Alun L. Palmer
But wtihin 5 independent and 25 total claims to save them from the cost of
an ESD!
> As to the examiner reading the specification, I'm certain that the vast
> majority do. However, I'm not certain that the vast majority possess
> pyschic ability to enable them to foresee precisely what part of the
> unclaimed disclosure the inventor/practitioner will claim to overcome a
> rejection. I am 100% certain that if an application were to be filed
> with five independent claims and a total of twenty-five claims, that
> most of the time, a practitioner would be able to file the application
> with a rainbow of claims from broadest reasonable to narrowest
> economically useful (can't be readily engineered around). In the
> post-Festo world, one would have thought that to be on par with an
> Eleventh Commandment.
>
Too often, the initial search is directed only to the broadest claims
without looking at the invention that underlies them. IMHO, this is due to
keyword searching. If they had to classify the invention as in days gone
by, then they ould do a better search than what we are seeing.
>>
>>> It always amazing me to listen to practitioners complain about how
>>> examiners are incompetent to turn out proper actions, yet folks don't
>>> appeal those incompetent rejections. Instead, they file
>>> continuations.
>>
>> We can't appeal until we have had two OAs, and yet the bad one is
>> usually the first one, then the 'real' one is made final, and we have
>> to continue the application so we can amend.
>
> Which would justify a continuation or an RCE. How does that address
> the "two CONS + one RCE limitations of the new rules?
>
It uses up our only RCE for no good reason.
>> The first one is often so bad that
>> amending would be pointless, which is ironic as that is when we have
>> the right to do so without continuing.
>
> If you don't amend around the first rejection, there are two
> possibilities:
>
> 1) The examiner maintains the rejection and makes it final. Is there
> a problem with appealing "the bad rejection" at that point (other than
> the inventor and/or practitioner knowing that the claim isn't
> patentability, nothwithstanding anything that the examiner has or
> hasn't done)? So what's the problem with the new rule package?
>
Appealing a frivolous 1st OA that has been made final (and they often are)
might get us a patent, but the closest art would never have been presented
to us, so perhaps it would be a weak patent. OTOH, some clients might
actually be happy with that, but want to avoid the cost of appeal.
> 2) The examiner is argued out of the rejection, but makes a new
> rejection. If that's made final, it's improper and the finality can be
> overcome by petitioning. You'll ultimately get a nonfinal action and
> at least one more action (final if appropriate). So what's the problem
> with respect to the new rule package?
>
Besides the problem of petitions timing out the prosecution, there is also
the problem that if we are busy we may not have time to fully analyse the
OA within one month. I suppose to overcome that we should check for two
finals in a row when we report the OA to the client, as those have at least
a 50/50 likelihood of being improper. It's certainly worth considering
under the new regime.
OTOH, I recently tried to challenge an improper final when it was too late
to petition, but the Examiner wouldn't withdraw it and his SPE wouldn't
intervene. Refusing to admit mistakes because you know that we can't do
anything about it is taking unfair advantage.
Maybe not if we call once a week to check the status.
Emma Anne
>
> But wtihin 5 independent and 25 total claims to save them from the cost of
> an ESD!
And worse than the cost, all those admissions against interest.
Emma Anne
What's wrong with simply raising the fee and allowing the Examiners more
time? That's what the EP does.
>
> Frankly, I view this as the Patent Bar having made its bed (because of
> unnecessarily multiplied filings and unnecessarily multiplied claims). The
> chickens have now come home to roost, and unfortunately, those practitioners
> who haven't had a hand in creating the problem will now, nevertheless, be
> caught in the solution.
>
You are right that I don't file all that many continuations, or all that
many claims for that matter (I mostly represent small firms and
universities and such who don't have a lot of money to spend on
patents). That part of the change won't effect me all that much.
But if I do need to file an appeal, I am afraid the system will be jam
packed with cases who *have* run out of continuations. And if the
Examiners are too busy, they can pretty easily chase cases into appeals
by sending back office actions that say "the applicant's arguments have
been considered and are not persuasive" the requisite number of times.
I have seen an example of what a time crunch can do in the PTO in the
PCT branch. They have deadlines they can't possibly meet, so they
basically don't open their mail. Searches don't get done anywhere near
18 months from the priority date.
Emma Anne
I think you are seeing criticism where it isn't intended (thought Alun
and yp should speak for themselves). It is very true that Examiners
frequently don't find the best art on the first search, but I've never
thought it was because they couldn't be bothered or were incompetent. I
always figured it was because by the time they whipped through the
figures and claims and figured out the class and subclass they barely
had time to do a few quick keyword searches to find something that might
possibly relate to each claim, or at least uses the same vocabulary.
Then the patent attorney call the Examiner and walks through the
invention and the claims and the references. Now the Examiner
understands the invention. Again, *not* because Examiners are stupid.
I know very well I couldn't do any better under those constraints. You
can't read a patent, understand it, do a good search, and write a good
office action in a day. You *have* to skim and throw things together.
>
> > I have consistently said that most
> > Examiners do a very good job given their time constraints. What I said
> > is that they jump to final rejections very quickly. This has been the
> > system and if it doesn't change, it is going to be a problem.
>
> First, I'll reiterate what I said in response to the material quoted above
> that was posted by Alan. A practitioner should be including the full range
> of claim scope in the original application, from the broadest reasonably
> believed to be patentable to the narrowest that it would be worthwhile
> paying an issue fee for.
I agree, this is good practice. But very few of the dependent claims
are going to get any real attention the first time around. No time.
>
> And I'll respond that the your comment (which echos something similar stated
> in Alan's post and implied by yp) is an indirect slap at an examiner's
> competence. Either the final was proper under present Office practice, or
> it was not.
I believe Examiners are like everyone else in that they respond to the
incentives before them. They get credit for a final disposition, and it
doesn't hurt the inventor since he can live to fight another day by
filing an RCE.
What I *hope* will happen under the new regime is that a more
comprehensive negotiation can take place between the attorney and the
Examiner. I don't mind explaining the invention and figuring out what
the Examiner is really objecting to and addressing it. But all that
often doesn't take place between the first and second office action.
The Examiner understands the invention after the first office action and
I understand that I need a affidavit after the second, for example.
> If it was proper, yet there's patentable subject matter
> disclosed that would have economic value if contained in an issued patent,
> then the practitioner who has not included a patentable claim (that is, a
> claim of the appropriately narrow scope) to that subject matter on filing,
> or at least in response to a first Office action rejecting the claim, has
> not served the client well. (How many continuations/RCEs does it take to
> recover from that, if the next claims set submitted for examination would
> include the narrowest claim that would be worth paying an issue fee for?)
> If the final was improper, then that can be easily and timely remedied by
> prompt review of the action and the appropriate timely filed petition,
> followed up with a telephone call if a decision is not timely forthcoming.
I've never gotten a final reversed. Last time I tried, the supervisor
told me that he wasn't going to hurt his Examiner's record by taking
away the final and I should just file an RCE.
> >
> >
> >
> >> yet folks don't appeal those
> >> incompetent rejections. Instead, they file continuations. It also
> >> amazes
> >> me how practitioners complain that examiners abuse final rejection
> >> practice,
> >> yet there a few petitions filed.
> >>
> >
> > Petitions can take a few years to be settled.
>
> I disagree. It never did when I was doing them in the Technology Center,
> and it doesn't where I'm doing them now (save for the very, very rare
> instance when we were unaware that the petition had even been filed, and
> where exactly was the practitioner in zealously representing the client by
> letting the petition linger with no response, in one case for two years??).
OK, I looked up that last one I did and it took 1 year and five months.
But that was with a very clearly improper 102 rejection (an element
simply wasn't present in the reference) and no oral argument. An RCE
certainly would have been far quicker - I did the appeal because this
particular Examiner was not listening and an RCE would have been
pointless. Assuming that is the shortest possible turnaround, I have to
think that many of them take at least two years.
>
> > Inventors would like
> > their patents to issue much sooner if at all possible.
>
> And they would be more likely to be issued much sooner if at all possible if
> the narrowest economically viable claims weres included in the application
> as filed, or as amended in response to a nonfinal Office action.
>
> > Still,
> > practitioners will certainly file appeals if they have to.
>
> Which is as it should be.
>
Yeah. But they seem like such a waste of time and effort. I wish there
were a more informal way to negotiate with the Examiner and one or a few
higher ups. I've often had luck with asking the Examiner's supervisor
to sit in, but that doesn't work if you get a primary.
yp
> "Emma Anne" <emma_a...@mac.com> wrote in message
>
> news:1i5k829.1ekud6hznagebN%emma...@mac.com...
>
>
>
>
>
> > Steve Marcus <smarcus_spamo...@cox.net> wrote:
>
> >> "Emma Anne" <emma_a...@mac.com> wrote in message
> >>news:1i5ibz7.db5pw1jfm4i5N%emma...@mac.com...
I did not say or imply that the examiners are incompetent. On the
other hand, I believe that many examiners are pigheaded. Once he makes
his mind that something is obvious, he will maintain his view no
matter what. In one of my cases the examiner interpreted a prior art
patent incorrectly. Even the filing of a Declaration under 37 CFR
1,132 by a renowned specialist did not change his mind. During a
telephone conference with him, he seemed to accept our argument, but
then in the written report stated that verbal statements were not
binding and maintained the final rejection. We had to go to appeal to
get the patent allowed.
Now I have the same examiner in another case and he is again pigheaded
and will lead us to another appeal. I have already filed one RCE with
no effect.
The problem with many US examiners, is that they seem to adopt an
adversary attitude toward the applicant (and his attorney). In some
other jurisdictions, including EPO, they will often come up with
suggestions on how the claims can be amended to be acceptable. This
can never happen in the USPTO. Here the examiner is usually the
pigheaded enemy.
> view. To reply, delete _spamout_ and replace with the numeral 3- Hide quoted text -
>
> - Show quoted text -
Tim Jackson
> It is very true that Examiners
> frequently don't find the best art on the first search, but I've never
> thought it was because they couldn't be bothered or were incompetent.
> invention and the claims and the references. Now the Examiner
> understands the invention.
And the Examiner says "OK, the reference I cited doesn't invalidate the
claim. But I'm going to have to do a fresh search."
Then the Examiner comes back with better prior art, in a final rejection
which means you can't respond properly because that would raise fresh
issues.
Should that happen? No, of course not.
But does it actually happen? Yes, time and time again. It's the major
cause of the RCEs and continuations that the new rules are designed to
restrict.
USPTO management calls this "rework" (which it is). They say it is the
fault of applicants (which it usually isn't).
So Steve would say "file an appeal". Yes, that's what's going to happen
in future - at significantly increased cost to the client, and
significant delay to the issuance of the patent.
What would really solve the problem, of course, is to address the real
cause of it. Give Examiners the time to get things right the first time
round. Or failing that, don't pressure them to make second actions
final, even when they only understood the invention the second time
round. Both of those things mean changing the count system.
But addressing the real cause of the problem would require USPTO
management to admit that the real cause is their own poor management.
--
Tim Jackson
ne...@timjackson.plus.invalid
(Change '.invalid' to '.com' to reply direct)
Steve Marcus
I'm all for doubling the amount of time that examiners are allowed on the
average case, and I'm all for increasing the amount of training that
examiners receive yearly. But for the most part the organized patent bar
and inventor associations are not willing to pay for this. Period.
>
>>
>> Frankly, I view this as the Patent Bar having made its bed (because of
>> unnecessarily multiplied filings and unnecessarily multiplied claims).
>> The
>> chickens have now come home to roost, and unfortunately, those
>> practitioners
>> who haven't had a hand in creating the problem will now, nevertheless, be
>> caught in the solution.
>>
>
> You are right that I don't file all that many continuations, or all that
> many claims for that matter (I mostly represent small firms and
> universities and such who don't have a lot of money to spend on
> patents). That part of the change won't effect me all that much.
>
> But if I do need to file an appeal, I am afraid the system will be jam
> packed with cases who *have* run out of continuations. And if the
> Examiners are too busy, they can pretty easily chase cases into appeals
> by sending back office actions that say "the applicant's arguments have
> been considered and are not persuasive" the requisite number of times.
BPAI is already hiring. I suspect, but do not know, that the hiring is
being driven both by an expectation that in the short term, the number of
appeals will increase, and also by proposals that would have both inter
partes reexaminations and post grant oppositions handled at the BPAI.
>
> I have seen an example of what a time crunch can do in the PTO in the
> PCT branch. They have deadlines they can't possibly meet, so they
> basically don't open their mail. Searches don't get done anywhere near
> 18 months from the priority date.
Again, this is a situation in which the squeaky wheels will get the oil.
Steve Marcus
Given that the above limitations won't apply to claiming multiple patentably
distinct inventions, provided that one acknowledges that the claims are to
restrictable inventions and that one files a suggested restriction
requirement with the application, I do not see that the 5/25 limitation
precludes filing claims from the broadest reasonably expected to be allowed
to the narrowest that one would pay an issue fee for. Remember, there is
always reissue if it turns out that one has through error, without deceptive
intent, failed to claim as broadly as one discovers that one needs to have
claimed.
>
>> As to the examiner reading the specification, I'm certain that the vast
>> majority do. However, I'm not certain that the vast majority possess
>> pyschic ability to enable them to foresee precisely what part of the
>> unclaimed disclosure the inventor/practitioner will claim to overcome a
>> rejection. I am 100% certain that if an application were to be filed
>> with five independent claims and a total of twenty-five claims, that
>> most of the time, a practitioner would be able to file the application
>> with a rainbow of claims from broadest reasonable to narrowest
>> economically useful (can't be readily engineered around). In the
>> post-Festo world, one would have thought that to be on par with an
>> Eleventh Commandment.
>>
>
> Too often, the initial search is directed only to the broadest claims
> without looking at the invention that underlies them. IMHO, this is due to
> keyword searching. If they had to classify the invention as in days gone
> by, then they ould do a better search than what we are seeing.
If in fact, narrow _claims_ are not being searched, then this is a mistake
on the part of the examiner in the sense that the examiner is required to
search what is claimed. If it is unclaimed disclosure that you find is not
being searched, then it is questionable as to whether it's an examiner
error, or a practitioner error.
>
>>>
>>>> It always amazing me to listen to practitioners complain about how
>>>> examiners are incompetent to turn out proper actions, yet folks don't
>>>> appeal those incompetent rejections. Instead, they file
>>>> continuations.
>>>
>>> We can't appeal until we have had two OAs, and yet the bad one is
>>> usually the first one, then the 'real' one is made final, and we have
>>> to continue the application so we can amend.
>>
>> Which would justify a continuation or an RCE. How does that address
>> the "two CONS + one RCE limitations of the new rules?
>>
>
> It uses up our only RCE for no good reason.
When would it be mandatory to "use up" an RCE rather than filing a
continuation, prior to having filed two continuing applications??
Well, what I'm reading in the above two paragraphs represents something in
your practice that needs attention. Finals will have to be (and arguably
should already have been) something that demand priority attention. It
should never arise that it is "too late" to petition. Period.
Whatever it takes; yet why does one need to call when one can view matters
on-line???
>
>>>
>>> The system is broken, but just not in the ways that the PTO seem to
>>> think.
>>
>> I disagree, for the reasons set forth above. I might add that I spent
>> quite a number of years handling petitions for the signature of one of
>> three TC Directors (that is, for an entire Tech Center), and my docket
>> was current within one week. Ultimately, the number of petitions
>> increased, and it was decided that some of my colleagues would handle
>> the petitions for their TC Director and I would handle petitions only
>> for my Director. I continued to maintain my petition docket current.
>> The reason? My TC Director was intolerant of examiners who abused
>> final rejection practice (and any other practice, including restriction
>> practice). As a result, the number of petitions filed was easily
>> manageable, and about 75% of the petitions were complaining about
>> perfectly acceptable examiner practice. The number of grantable
>> petitions was continuing to drop when I changed positions.
>>>
>>> Alun
>>
>> Steve
>
Steve
Steve Marcus
Interesting comment. Prosecution in the Office isn't litigation.
Admissions that something is not patentable, or that there's prior art out
there that arguably may defeat some claims, are part of such prosecution.
In the "old days," some practitioners used to intentionally file overly
broad claims, dangling dependent claims from them, and thereby achieve a
"bright line" that they believed emphasized patentability. Those days have
long been gone for most practitioners, as filing costs and claim surcharges
increased. In today's practice, the necessity of having good pre-exam
searches is being emphasized, and admissions as to what in the disclosure is
not patentable as a result of such searches is, as it always has been, a
necessity. Just more so...
Steve Marcus
I encounter more and more incompetent examinations. Yet I doubt that it's a
result of examiners not reading the disclosure, or even doing the
examination too quickly. I won't comment further on that, though...beyond
saying that:
1) If a practitioner encounters incompetent examiner, complaints should be
loud and long, and
2) It is not necessarily incompetent for an examiner to have not searched
unclaimed disclosure.
>
> Then the patent attorney call the Examiner and walks through the
> invention and the claims and the references. Now the Examiner
> understands the invention. Again, *not* because Examiners are stupid.
> I know very well I couldn't do any better under those constraints. You
> can't read a patent, understand it, do a good search, and write a good
> office action in a day. You *have* to skim and throw things together.
I disagree. And in my examining days, I examined in an area that command
among the highest production expectancy in the utility examination area.
>
>>
>> > I have consistently said that most
>> > Examiners do a very good job given their time constraints. What I said
>> > is that they jump to final rejections very quickly. This has been the
>> > system and if it doesn't change, it is going to be a problem.
>>
>> First, I'll reiterate what I said in response to the material quoted
>> above
>> that was posted by Alan. A practitioner should be including the full
>> range
>> of claim scope in the original application, from the broadest reasonably
>> believed to be patentable to the narrowest that it would be worthwhile
>> paying an issue fee for.
>
> I agree, this is good practice. But very few of the dependent claims
> are going to get any real attention the first time around. No time.
I disagree that this is what examiners are required to do, or should find
any necessity to do. If you encounter this, your options are to complain,
to petition finals resulting from the examiner suddenly giving the dependent
claims attention after first action and amendment, and ultimately to appeal
bad rejections. And, where such bad rejections get withdrawn and
prosecution starts up again too frequently, to complain about that.
>
>
>>
>> And I'll respond that the your comment (which echos something similar
>> stated
>> in Alan's post and implied by yp) is an indirect slap at an examiner's
>> competence. Either the final was proper under present Office practice,
>> or
>> it was not.
>
> I believe Examiners are like everyone else in that they respond to the
> incentives before them. They get credit for a final disposition, and it
> doesn't hurt the inventor since he can live to fight another day by
> filing an RCE.
Which does not change the fact that the final is either proper or it's not.
If it is improper, what does the examiner having satisfied an incentive by
issuing an improper final disposition (actually, final rejections are not
"counters" for examiners, but I take it you mean that the final will force a
re-filing by continuing application or RCE), have to do with the price of
chickens? If the final is not proper, petition. Even examiners can learn,
if clubbed over the head sufficient times.
>
> What I *hope* will happen under the new regime is that a more
> comprehensive negotiation can take place between the attorney and the
> Examiner. I don't mind explaining the invention and figuring out what
> the Examiner is really objecting to and addressing it. But all that
> often doesn't take place between the first and second office action.
This should be emphasized under the new practice, and more interviews
between first and second actions (i.e. prior to final rejection) should be
undertaken.
> The Examiner understands the invention after the first office action and
> I understand that I need a affidavit after the second, for example.
See above.
>
>
>> If it was proper, yet there's patentable subject matter
>> disclosed that would have economic value if contained in an issued
>> patent,
>> then the practitioner who has not included a patentable claim (that is, a
>> claim of the appropriately narrow scope) to that subject matter on
>> filing,
>> or at least in response to a first Office action rejecting the claim, has
>> not served the client well. (How many continuations/RCEs does it take to
>> recover from that, if the next claims set submitted for examination would
>> include the narrowest claim that would be worth paying an issue fee for?)
>> If the final was improper, then that can be easily and timely remedied by
>> prompt review of the action and the appropriate timely filed petition,
>> followed up with a telephone call if a decision is not timely
>> forthcoming.
>
> I've never gotten a final reversed. Last time I tried, the supervisor
> told me that he wasn't going to hurt his Examiner's record by taking
> away the final and I should just file an RCE.
But the supervisor doesn't decide a petition from a premature final, the TC
Director does. And if a TC Director is "delegating" the decision to the SPE
and signing a bad decision, then a renewed petition should be filed. If the
TC Director doesn't understand the line between properly and improperly
making an action final, it is possible to educate the TC Director by
continuing to petition up the line. (Can you understand the difference
between complaining about not getting relief that you require and are
entitled to on Usenet, and ultimately making the water too hot for PTO
officials to handle by petitioning when you are entitled to relief.?)
>
>> >
>> >
>> >
>> >> yet folks don't appeal those
>> >> incompetent rejections. Instead, they file continuations. It also
>> >> amazes
>> >> me how practitioners complain that examiners abuse final rejection
>> >> practice,
>> >> yet there a few petitions filed.
>> >>
>> >
>> > Petitions can take a few years to be settled.
>>
>> I disagree. It never did when I was doing them in the Technology Center,
>> and it doesn't where I'm doing them now (save for the very, very rare
>> instance when we were unaware that the petition had even been filed, and
>> where exactly was the practitioner in zealously representing the client
>> by
>> letting the petition linger with no response, in one case for two
>> years??).
>
> OK, I looked up that last one I did and it took 1 year and five months.
> But that was with a very clearly improper 102 rejection (an element
> simply wasn't present in the reference) and no oral argument. An RCE
> certainly would have been far quicker - I did the appeal because this
> particular Examiner was not listening and an RCE would have been
> pointless. Assuming that is the shortest possible turnaround, I have to
> think that many of them take at least two years.
I understand that the BPAI is hiring...
>
>>
>> > Inventors would like
>> > their patents to issue much sooner if at all possible.
>>
>> And they would be more likely to be issued much sooner if at all possible
>> if
>> the narrowest economically viable claims weres included in the
>> application
>> as filed, or as amended in response to a nonfinal Office action.
>>
>> > Still,
>> > practitioners will certainly file appeals if they have to.
>>
>> Which is as it should be.
>>
>
> Yeah. But they seem like such a waste of time and effort. I wish there
> were a more informal way to negotiate with the Examiner and one or a few
> higher ups. I've often had luck with asking the Examiner's supervisor
> to sit in, but that doesn't work if you get a primary.
The system is what it is. Appeals are necessary, and so are petitions. And
so are complaints, at high levels, if neither results in a timely response.
Particularly under the new rules.
Steve Marcus
"Tim Jackson" <ne...@timjackson.plus.invalid> wrote in message
news:MPG.2173759ec...@text.usenet.plus.net...
> On Sun, 7 Oct 2007 14:45:57 -0600, Emma Anne wrote...
>> It is very true that Examiners
>> frequently don't find the best art on the first search, but I've never
>> thought it was because they couldn't be bothered or were incompetent.
> [snip]
>> Then the patent attorney call the Examiner and walks through the
>> invention and the claims and the references. Now the Examiner
>> understands the invention.
>
> And the Examiner says "OK, the reference I cited doesn't invalidate the
> claim. But I'm going to have to do a fresh search."
>
> Then the Examiner comes back with better prior art, in a final rejection
> which means you can't respond properly because that would raise fresh
> issues.
>
> Should that happen? No, of course not.
>
> But does it actually happen? Yes, time and time again. It's the major
> cause of the RCEs and continuations that the new rules are designed to
> restrict.
>
> USPTO management calls this "rework" (which it is). They say it is the
> fault of applicants (which it usually isn't).
And when it is not, there is a creature called a petition. It is free to
file, in terms of USPTO fees. And if enough petitions were filed
complaining about improperly rendered final rejections, examiners would get
the message. If TC Directors are supporting improper examiner actions in
terms of making the actions final, the petition should be pursued. Final
rejection practice is very important to "compact prosecution," which remains
one of the "Holy Grails" around PTO. Practitioners who timely complain of
improper final rejections will, ultimately, get relief, and will ultimately
have the effect of reducing such improper finals. Acquiesing in the
improper finals by simply rolling over and re-filing is analogous to giving
a child what it wants every time the child throws a tantrum.
>
> So Steve would say "file an appeal". Yes, that's what's going to happen
> in future - at significantly increased cost to the client, and
> significant delay to the issuance of the patent.
>
No, Steve would say petition the improper final...
> What would really solve the problem, of course, is to address the real
> cause of it. Give Examiners the time to get things right the first time
> round. Or failing that, don't pressure them to make second actions
> final, even when they only understood the invention the second time
> round. Both of those things mean changing the count system.
Perhaps USPTO would be happy to, let's say, triple the fees and double the
examining corps, support staff, and supporting infrastructure. Would your
clients be happy with that?
>
> But addressing the real cause of the problem would require USPTO
> management to admit that the real cause is their own poor management.
From where I sit, and frankly, from what I've seen posted on this thread,
practitioners share at least as much of the blame as does USPTO management.
And this thread is the tip of the iceberg, as I see much more, and talk with
many more practitioners, daily.
>
> --
> Tim Jackson
> ne...@timjackson.plus.invalid
> (Change '.invalid' to '.com' to reply direct)
Steve
Steve Marcus
What I would done after receiving the decision on appeal, (rather than
posting to Usenet well after the fact), was to call the TC Director and
inform her/him what happened. I would state, politely but firmly, that
while issues on appeal are often arguable, this one simply wasn't, and that
you hoped that the TC Director would communicate to the examiner that this
type of examination did not meet the PTO standard.
>
> Now I have the same examiner in another case and he is again pigheaded
> and will lead us to another appeal. I have already filed one RCE with
> no effect.
This is the direct result of giving a child what it wants each time that
child throws a tantrum. You need to find a route to complain through; if
not by way of petition, then by telephone call.
>
> The problem with many US examiners, is that they seem to adopt an
> adversary attitude toward the applicant (and his attorney). In some
> other jurisdictions, including EPO, they will often come up with
> suggestions on how the claims can be amended to be acceptable. This
> can never happen in the USPTO. Here the examiner is usually the
> pigheaded enemy.
See my comments above.
Emma Anne
> What would really solve the problem, of course, is to address the real
> cause of it. Give Examiners the time to get things right the first time
> round. Or failing that, don't pressure them to make second actions
> final, even when they only understood the invention the second time
> round. Both of those things mean changing the count system.
We are *so* on the same page. :-)
Emma Anne
> "Emma Anne" <emma...@mac.com> wrote in message
> news:1i5m9pe.14cs9nalf0ianN%emma...@mac.com...
> > Alun L. Palmer <elek...@yahoo.com> wrote:
> >
> >>
> >> But wtihin 5 independent and 25 total claims to save them from the cost
> >> of
> >> an ESD!
> >
> > And worse than the cost, all those admissions against interest.
>
> Interesting comment. Prosecution in the Office isn't litigation.
No but patents end up in litigation, and then the litigation attorneys
frown at every word of mine in the file history. :-)
> Admissions that something is not patentable, or that there's prior art out
> there that arguably may defeat some claims, are part of such prosecution.
Well sort of, in that we quit fighting for claims when we see good prior
art, but that doesn't mean it is a good idea to file a big document full
of explicit admissions if you can avoid it.
Emma Anne
> >
> > What's wrong with simply raising the fee and allowing the Examiners more
> > time? That's what the EP does.
>
> I'm all for doubling the amount of time that examiners are allowed on the
> average case, and I'm all for increasing the amount of training that
> examiners receive yearly. But for the most part the organized patent bar
> and inventor associations are not willing to pay for this. Period.
By the way thanks for engaging in this discussion. I think we are
largely on the same side, though we approach it from different angles.
I don't engage with those groups you mention, so I don't know thir
positions, but if they are against raising examination fees (with
gurantees that the fees will go to examinations and not Congressional
budgets) I disagree with them.
Emma Anne
>
> Perhaps USPTO would be happy to, let's say, triple the fees and double the
> examining corps, support staff, and supporting infrastructure. Would your
> clients be happy with that?
(jumping in)
My time costs my clients more than PTO fees do, so they would on average
be saving money (and certainly time). It would take some explaining,
but yes, they would be happier.
Emma Anne
>
> What I would done after receiving the decision on appeal, (rather than
> posting to Usenet well after the fact), was to call the TC Director and
> inform her/him what happened. I would state, politely but firmly, that
> while issues on appeal are often arguable, this one simply wasn't, and that
> you hoped that the TC Director would communicate to the examiner that this
> type of examination did not meet the PTO standard.
Hmm. More food for thought.
Emma Anne
> "Emma Anne" <emma...@mac.com> wrote in message
> news:1i5m9ux.u52nyx9kcvokN%emma...@mac.com...
(snip)
>
> >
> > Then the patent attorney call the Examiner and walks through the
> > invention and the claims and the references. Now the Examiner
> > understands the invention. Again, *not* because Examiners are stupid.
> > I know very well I couldn't do any better under those constraints. You
> > can't read a patent, understand it, do a good search, and write a good
> > office action in a day. You *have* to skim and throw things together.
>
> I disagree. And in my examining days, I examined in an area that command
> among the highest production expectancy in the utility examination area.
Perhaps you are unusually fast.
(snip)
> >
> > I agree, this is good practice. But very few of the dependent claims
> > are going to get any real attention the first time around. No time.
>
> I disagree that this is what examiners are required to do, or should find
> any necessity to do. If you encounter this, your options are to complain,
> to petition finals resulting from the examiner suddenly giving the dependent
> claims attention after first action and amendment, and ultimately to appeal
> bad rejections. And, where such bad rejections get withdrawn and
> prosecution starts up again too frequently, to complain about that.
You have given me much food for thought. I haven't done these things
very often.
(big snip)
Alun L. Palmer
We already are paying for it, but congress is diverting the money!
>>
>>>
>>> Frankly, I view this as the Patent Bar having made its bed (because
>>> of unnecessarily multiplied filings and unnecessarily multiplied
>>> claims). The
>>> chickens have now come home to roost, and unfortunately, those
>>> practitioners who haven't had a hand in creating the problem will
>>> now, nevertheless, be caught in the solution.
>>>
>>
>> You are right that I don't file all that many continuations, or all
>> that many claims for that matter (I mostly represent small firms and
>> universities and such who don't have a lot of money to spend on
>> patents). That part of the change won't effect me all that much.
>>
>> But if I do need to file an appeal, I am afraid the system will be jam
>> packed with cases who *have* run out of continuations. And if the
>> Examiners are too busy, they can pretty easily chase cases into
>> appeals by sending back office actions that say "the applicant's
>> arguments have been considered and are not persuasive" the requisite
>> number of times.
>
> BPAI is already hiring. I suspect, but do not know, that the hiring is
> being driven both by an expectation that in the short term, the number
> of appeals will increase, and also by proposals that would have both
> inter partes reexaminations and post grant oppositions handled at the
> BPAI.
>
But hopefully no interferences anymore
Alun L. Palmer
news:1i5m9ux.u52nyx9kcvokN%emma...@mac.com:
The thing is, it doesn't make much functional difference to me why the
first OA so often doesn't address the invention. I agree that it probably
is that they have insufficient time, but it still forces us into a
premature RCE when the properly focussed OA is made final so we can't
amend. Not giving them enough time forces them to do an incompetent job,
and the end result is the same.
I was being sarcastic when I said "Heaven forbid that the examiner should
have to read the spec before doing the search!", but that's as close as I
came to calling them incompetent. Emma doesn't think they have time to read
it. Don't you think that's a problem?
When I was a searcher I used to reckon it took 5-6 hours to do a good
search. I could do a cr*ppy search in 2-3 hours, or a 'quick and dirty'
keyword search in 15-20 minutes, and when I look in the filewrappers it's
the last of these that I'm seeing. If they have to do an OA in a day, then
they can't do a good search.
OTOH, I would have thought that someone doing such a poor search would have
time to read the spec?
> Then the patent attorney call the Examiner and walks through the
> invention and the claims and the references. Now the Examiner
> understands the invention. Again, *not* because Examiners are stupid.
> I know very well I couldn't do any better under those constraints. You
> can't read a patent, understand it, do a good search, and write a good
> office action in a day. You *have* to skim and throw things together.
>
Agreed. So, either they need more time, or they shouldn't be making that
kind of mess final so they can get a count. We could live with that if we
had multiple RCEs available. but with only one it's oops, oh dear, it's
gone.
I read that this was done so the PTO management could do an end run around
union agreements, and it seems plausible to me.
Now here's a funny one. I got a 102 where the reference only showed one
element out of eight recited in the independent claim, and said the other
seven were inherent or obvious (they weren't - trust me on this) or ignored
at least one of them completely. When I pointed out in laborious detail
everything that was missing from the rejection it was sustained and made
final, so I appealed, assuming that the examiner would never see reason,
and got what I expected, i.e. a remand and a properly done OA (more or
less). So you could say the system worked, but it would have been ever so
nice if the first OA had been other than laughable. Not only that, but it
shows that Emma's experience isn't unique.
Alun L. Palmer
> On Sun, 7 Oct 2007 14:45:57 -0600, Emma Anne wrote...
>> It is very true that Examiners
>> frequently don't find the best art on the first search, but I've never
>> thought it was because they couldn't be bothered or were incompetent.
> [snip]
>> Then the patent attorney call the Examiner and walks through the
>> invention and the claims and the references. Now the Examiner
>> understands the invention.
>
> And the Examiner says "OK, the reference I cited doesn't invalidate the
> claim. But I'm going to have to do a fresh search."
>
> Then the Examiner comes back with better prior art, in a final rejection
> which means you can't respond properly because that would raise fresh
> issues.
>
> Should that happen? No, of course not.
>
> But does it actually happen? Yes, time and time again. It's the major
> cause of the RCEs and continuations that the new rules are designed to
> restrict.
>
What you describe is just a day at the office for me. Happens all the time.
> USPTO management calls this "rework" (which it is). They say it is the
> fault of applicants (which it usually isn't).
>
> So Steve would say "file an appeal". Yes, that's what's going to happen
> in future - at significantly increased cost to the client, and
> significant delay to the issuance of the patent.
>
> What would really solve the problem, of course, is to address the real
> cause of it. Give Examiners the time to get things right the first time
> round. Or failing that, don't pressure them to make second actions
> final, even when they only understood the invention the second time
> round. Both of those things mean changing the count system.
>
> But addressing the real cause of the problem would require USPTO
> management to admit that the real cause is their own poor management.
>
I agree with every word Tim posted. It's a management problem.
Alun L. Palmer
No, it's not, but if you really beleive in compact prosecution (I can't say
that I do) then you should be in favour of the examiner reading the whole
spec to really understand what the invention is. Of course, legally
speaking what's claimed is the invention, but the examiner should
understand that the originally filed claims are always broader than the
core of the invention. If a little time is taken to figure it out, it
shouldn't add any time to the search itself. But there we are, talking
about time again.
IME when preparing responses, taking a little time to read and understand
the spec saves time in the long run.
Alun L. Palmer
Perhaps I am naive in not really expecting improper finals, and perhaps in
the past it was easier for all concerned if we just paid the fee. Now it
won't be anymore.
Steve Marcus
> "Steve Marcus" <smarcus_...@cox.net> wrote in
> news:9KoOi.335280$dA7....@newsfe16.lga:
>
>>
>> "Emma Anne" <emma...@mac.com> wrote in message
>> news:1i5m9ux.u52nyx9kcvokN%emma...@mac.com...
>>> Steve Marcus <smarcus_...@cox.net> wrote:
>>>
>>>> "Emma Anne" <emma...@mac.com> wrote in message
>>>> news:1i5k829.1ekud6hznagebN%emma...@mac.com...
>>>> > Steve Marcus <smarcus_...@cox.net> wrote:
>>>> >
>>>> >> "Emma Anne" <emma...@mac.com> wrote in message
>>>> >> news:1i5ibz7.db5pw1jfm4i5N%emma...@mac.com...
>>>> >> > yp <yp...@hotmail.com> wrote:
>>>> >> >
<snip>
>>>
>>> I think you are seeing criticism where it isn't intended (thought Alun
>>> and yp should speak for themselves). It is very true that Examiners
>>> frequently don't find the best art on the first search, but I've never
>>> thought it was because they couldn't be bothered or were incompetent.
>>> I always figured it was because by the time they whipped through the
>>> figures and claims and figured out the class and subclass they barely
>>> had time to do a few quick keyword searches to find something that
>>> might possibly relate to each claim, or at least uses the same
>>> vocabulary.
>>
>> I encounter more and more incompetent examinations. Yet I doubt that
>> it's a result of examiners not reading the disclosure, or even doing
>> the examination too quickly. I won't comment further on that,
>> though...beyond saying that:
>>
>> 1) If a practitioner encounters incompetent examiner, complaints
>> should be loud and long, and
>>
>> 2) It is not necessarily incompetent for an examiner to have not
>> searched unclaimed disclosure.
>>
>
> No, it's not, but if you really beleive in compact prosecution (I can't
> say
> that I do) then you should be in favour of the examiner reading the whole
> spec to really understand what the invention is.
Nope, you can't have your cake and eat it too. If the disclosure contains
something patentable, then claim it at filing. This isn't a game, so that
you can leave important (apt descriptive adjective for subject matter
believed to be patentable) unclaimed at filing as a hedge against the 2nd
action being made final if what you have claimed receives a first rejection.
The examiner isn't required to waste time searching everything that's
unclaimed on the "hunch" that you might decide to claim it. And that's been
the practice for more than forty years.
>Of course, legally
> speaking what's claimed is the invention, but the examiner should
> understand that the originally filed claims are always broader than the
> core of the invention. If a little time is taken to figure it out, it
> shouldn't add any time to the search itself. But there we are, talking
> about time again.
With all due respect, the above paragraph is essentially crap. The examiner
isn't required to waste time searching everything that's unclaimed on the
"hunch" that you might decide to claim it. I've a simplier idea; when you
file an application, claim what you regard as being the invention, from the
broadest claim you think might be patentable to the narrowest claim that you
think it worthwhile to pay an issue fee for.
<major snip>
JD
> "Alun L. Palmer" <elekt...@yahoo.com> wrote in messagenews:Xns99C398EFA463...@216.168.3.50...
>
>
>
>
>
> > "Steve Marcus" <smarcus_spamo...@cox.net> wrote in
> >news:9KoOi.335280$dA7....@newsfe16.lga:
>
> >> "Emma Anne" <emma_a...@mac.com> wrote in message
> >>news:1i5m9ux.u52nyx9kcvokN%emma...@mac.com...
> >>> Steve Marcus <smarcus_spamo...@cox.net> wrote:
>
> >>>> "Emma Anne" <emma_a...@mac.com> wrote in message
> >>>>news:1i5k829.1ekud6hznagebN%emma...@mac.com...
> >>>> > Steve Marcus <smarcus_spamo...@cox.net> wrote:
>
> >>>> >> "Emma Anne" <emma_a...@mac.com> wrote in message
> >>>> >>news:1i5ibz7.db5pw1jfm4i5N%emma...@mac.com...
>
>
> - Show quoted text -
"Nope, you can't have your cake and eat it too. If the disclosure
contains
something patentable, then claim it at filing. This isn't a game, so
that
you can leave important (apt descriptive adjective for subject matter
believed to be patentable) unclaimed at filing as a hedge against the
2nd
action being made final if what you have claimed receives a first
rejection.
The examiner isn't required to waste time searching everything that's
unclaimed on the "hunch" that you might decide to claim it. And that's
been
the practice for more than forty years."
With all due respect, this is really a rather uninformed, and naive,
opinion on what constitutes the "invention process." The idea that
you will know everything that is patentable, and will have value to
the applicant, on the day you file the app is pretty silly.
The "invention" is not something that the solo inventor cooked up in
his basement and when he/she "perfected" it, hermetically sealed it in
crystals from the planet Krypton. Or the team of engineers in the
company lab.
When you actually meet and interview inventors, you soon realize that
they never stop developing the "invention." I've spent days,
literally days, meeting with inventors, furiously asking questions,
taking notes, answering questions. You take in everything you can and
on the plane back home try to organize your filing strategy. You
figure there's enough "invention" in there to write 1, 2, 3, maybe 4
apps. You draft 1, or 2, or so and fire off the drafts to the
inventors. The response you get is: Yeah, that's pretty good, but
we're not doing that or this anymore. Here's what we're doing now.
And oh, by the way, we forgot to tell you about this other thing while
you were out here.
You revise and draft anew. You fire off the revisions, you get some
disagreements amongst the inventors about this or that, you do some
cajoling and some arm twisting and you get the requisite signatures on
the decs and assignments and file away. YAY!!! Break out the
champagne.
6 months, a year later, you get a call from the client: Here's our
actual commercial embodiment. Do our claims cover it?
Of course the commercial embodiment has differences from the 10
embodiments you drafted in the app.
Three years later: Oh, and another thing, we didn't think that the
method of making it was all that great, but we've been looking into it
and you know what? There's nothing like it that we know of. Good
thing we disclosed it. And good thing we have a continuation
pending. Let's get some coverage for it.
All of these PTO (mis)management types that have arrogantly accused
applicants of coming to the PTO "not ready to prosecute their
applications" should really take their heads out of you know where and
go out there and actually meet some inventors. Really learn how
challenging it is to effectively represent their interests in the face
of such uninformed and arrogant criticism.
And we don't expect examiners to "waste time" examining our claims to
new inventions. We expect them to do their jobs. They can have their
precious "counts" for examining our continuations. Now all we need to
do is get rid of the current crop of ignorant, arrogant chuckle heads
that are running, and ruining, the PTO so that our clients can get
what they are entitled to: limited exclusivity for their inventions
that they disclose.
Steve Marcus
"JD" <johnny...@aol.com> wrote in message
news:1191980691.7...@57g2000hsv.googlegroups.com...
You have absolutely no clue about the process of examining applications, and
none of what you've written above has anything relevant to add to this
discussion.
I don't care if you, as an inventor, are constantly inventing in your sleep.
When you file an application, there is a boundary on what you've invented as
disclosed in that application. What you can claim as being the invention
for which patent protection is being sought in _that_ application is no
more, and no less, than what is supported by the written description and
enabled such that one of ordinary skill in the art might make, use and sell
the claimed invention based on the disclosure. You can't claim what isn't
disclosed. Period.
If you, as the inventor, don't have a cogent idea of what that invention is
at the time of filing, of what the state of the prior art is at the time of
filing, what you believe to be the broadest expression of that invention is
that is likely to be patentable (that is, what isn't so broadly worded as to
read on the prior art), and what the narrowest expression of what the
invention is that would be economically worthwhile to claim (because the
invention cannot be practiced by simply changes that will avoid the claim
language), then you are wasting time and money even "setting foot in" the
PTO.
JD
> "JD" <johnnylar...@aol.com> wrote in message
I was an examiner for 9 years, so I think I might have a teensy weensy
clue as to what it takes to examine applications. And I've been a
practitioner for 8+ years, so I think I know a little bit about what
it takes to effectively represent inventors.
I never said you could, or should be able to, claim inventions that
weren't disclosed. I'm well aware of the requirements of 112, 1st.
My point was that writing a patent application is one of the toughest
legal tasks and can never be done perfectly. Or so said the
Supremes. Can't remember the case, but you can look it up.
An application is in essence a snapshot of the invention. It is
literally the equivalent of trying to catch lightning in a bottle.
The application filing date represents the point during the invention
"process" that applicant, in consultation with his/her attorney,
decide that it's best to proceed with filing an application. But that
doesn't mean the development stops, either by applicant or applicant's
competitors.
Another point was, your advice that applicant should present a range
of claims, from the broadest they believe allowable to the narrowest
they are willing to pay an issue fee for, is pretty silly. Like I
said, no applicant or attorney can predict the future that well. If
we could, we certainly wouldn't be prosecuting patent applications.
We'd be picking lottery numbers.
The recent Takeda decision from the USDC for DC is a prime example.
Takeda had a patent on a compound. They subsequently determined that
the method of making it had value, and was an invention that was
enabled and supported by their application. They wanted the claims.
The PTO, and the Board in particular, tried to deny them by cooking up
this "unexplained delay" theory of double patenting that they found
lying around in the dicta of the Geneva Pharmaceuticals case.
Thankfully, the judge set the PTO and the Board straight.
Applicants should be able to present any claim that is enabled and
supported by their spec whenever they have a need to. To present, and
pay for, a bunch of claims that you have a "hunch" (to use your words)
may have some value is simply not good practice. And clients don't
make business decisions to comport with the decisions they make during
prosecution. They make decisions during prosecution to comport with
their business decisions. That's how they stay in business. That's
something that PTO management clealry doesn't understand.
As for your advice to "just petition" or "just appeal," I agree that's
good advice. I hope all those SPE's and SPRE's are prepared for the
onslaught. When I'm making my 5th call to check up on the status of
my 181 petition, I'm just going to tell them, "Steve Marcus told me to
call." :-)
JD
Steve Marcus
Well, then I only have 20 or so years in the field more than you do.
>
> I never said you could, or should be able to, claim inventions that
> weren't disclosed. I'm well aware of the requirements of 112, 1st.
> My point was that writing a patent application is one of the toughest
> legal tasks and can never be done perfectly. Or so said the
> Supremes. Can't remember the case, but you can look it up.
If that was your point, why didn't you just say so, instead of launching in
to a pointless diatribe?
As for figuring out that you should file three or four applications, perhaps
that's warranted if you have three or four patentably distinct inventions
disclosed. That's about all that might be dictated by "strategy." If you
have but one patentably distinct invention disclosed, you need to file _a_
patent application.
If, after you send that draft to an inventor, they inform you that they've
moved on, and aren't practicing the invention any more, and have invented
another invention, then one would question why you need to file more than
one application on the first invention plus nonpatentably distinct
improvements, or more than two applications, one for the original disclosure
and one for the new, patentably distinct improvement. All of the soapbox
preaching in your post simply doesn't address these seemingly basic
concepts.
>
> An application is in essence a snapshot of the invention. It is
> literally the equivalent of trying to catch lightning in a bottle.
> The application filing date represents the point during the invention
> "process" that applicant, in consultation with his/her attorney,
> decide that it's best to proceed with filing an application. But that
> doesn't mean the development stops, either by applicant or applicant's
> competitors.
So there are several basic concepts. If development continues and there are
patentably indistinct variations, then broad claims in the single
application prepared from the original disclosure are patentable, then they
will cover the improvements. If broad claims aren't patentable, so that you
can't cover the improvement, and the improvement is patentably distinct, a
second application is warranted.
>
> Another point was, your advice that applicant should present a range
> of claims, from the broadest they believe allowable to the narrowest
> they are willing to pay an issue fee for, is pretty silly. Like I
> said, no applicant or attorney can predict the future that well.
Drafting broad claims has nothing to do with predicting the future. If
broad claims are patentable, they may well cover follow-on inventions,
especially patentably indistinct ones. If not, then if the follow-on
invention(s) are patentably distinct from the originally disclosed
invention, then one simply files follow-on applications. Note that the
inability to claim benefit of the original invention as disclosed in the
first filed application has nothing to do with the new rule package, since
claims to this patentably distinct invention will only be entitled to the
actual filing date of the follow-on application.
> If
> we could, we certainly wouldn't be prosecuting patent applications.
> We'd be picking lottery numbers.
Cute, but irrelevant.
>
> The recent Takeda decision from the USDC for DC is a prime example.
> Takeda had a patent on a compound. They subsequently determined that
> the method of making it had value, and was an invention that was
> enabled and supported by their application. They wanted the claims.
> The PTO, and the Board in particular, tried to deny them by cooking up
> this "unexplained delay" theory of double patenting that they found
> lying around in the dicta of the Geneva Pharmaceuticals case.
> Thankfully, the judge set the PTO and the Board straight.
And this has _what_ to do with the new rules, or the discussions thereof??
If the claims to the method were patentably distinct from the claims of the
compound, what was the problem with filing a divisional? Are you suggesting
that if such claims had been presented, an examiner wouldn't have required
restriction??
>
> Applicants should be able to present any claim that is enabled and
> supported by their spec whenever they have a need to.
Then applicants should be content to wait three, four or five years for
first Office actions. Or to pay fees at three or four times the current
rate. Those things are the logical result following from the premise
expressed in the immediately above sentence. Of course Office management
has been blistered regarding backlogs. So now when they present a
reasonable alternative to backlogs, by cutting down on the number of
"strategic" follow-on applications, you're not happy with that either.
>To present, and
> pay for, a bunch of claims that you have a "hunch" (to use your words)
> may have some value is simply not good practice.
Who wrote anything about having a hunch. I wrote about
inventors/applicants/clients having some idea of what their invention
represented in terms of the prior art prior to filing, and presenting the
broadest claims that could reasonably be expected to be patentable. The
presentation of the narrowest claims that one would find it reasonable to
pay an issue fee for is simply a practical answer to the whining about
receiving final rejections after first filing a bunch of unreasonably broad
claims, and then adding claims containing limitations that practitioners
believe that the examiners should have "guessed" or "supposed" or
"anticipated" would be claimed.
> And clients don't
> make business decisions to comport with the decisions they make during
> prosecution. They make decisions during prosecution to comport with
> their business decisions. That's how they stay in business. That's
> something that PTO management clealry doesn't understand.
Probably because it makes no sense. You can't make a business decision to
claim bunch of previously disclosed, yet unclaimed limitations, because
you've suddenly decided that you want to protect the invention, but the
examiner had refused unduly broad claims. The business decision that the
invention was worth protecting, at least at the time that the application
was approved for filing, should have been that a range of claims to the
invention should be presented, as a hedge against broad claims being
unpatentable, and final rejection practice forcing the applicant to refile.
>
> As for your advice to "just petition" or "just appeal," I agree that's
> good advice. I hope all those SPE's and SPRE's are prepared for the
> onslaught. When I'm making my 5th call to check up on the status of
> my 181 petition, I'm just going to tell them, "Steve Marcus told me to
> call." :-)
Have you reviewed 37 CFR 10.18 recently? If you tell anyone at PTO that I
told you to call regarding a particular proceeding which I have never seen,
and so would have no idea of the merits of what's been done by either party
to the prosecution in that proceeding), then you will be in need of
reviewing that regulation, and it gets back to me that you did, you will
need to rapidly become familiar with that rule, and a few others in Part 10.
BTW, that's not a threat. It's a promise.
Naturally, you can always call me for advice re a particular matter; one
more practitioner adding my name to his or her "Roledex" doesn't bother me.
I typically won't provide legal advice, only advice as to practice and
procedure. But if you ask me nicely, I'll try to help you to understand
whether you need to be calling someone at the PTO about something.
>
>
> JD
JD
Steve,
Relax. I was just busting your chops. :-)
There are a lot of serious questions raised by the new rules that
remain unanswered. And the only conclusion many of us in private
practice can conclude is that PTO management did not have the
experience to foresee them. Just an opinion.
For example, I file an initial application "I" that has claims to 1)
an apparatus for doing X and 2) a method for doing X. I get a
restriction (or an SRR accepted). I prosecute initial application "I"
with claims to the apparatus for doing X to allowance. While "I" is
still pending I file divisional application "D1" including claims to
the method of doing X. While prosecuting "D" my "I" application
issues. I no longer have co-pendency with "I".
And then my client comes to me and, just like I said in my previous
post, says, "Hey, we think we really go something with a method for
making the apparatus for doing X." I review the spec that was
originally filed, and it supports and enables a method for making the
apparatus for doing X. (And this is a business decision. The client
never saw the need, or value, to pursue claims to a method for making
the apparatus for doing X until it became apparent that such claims
had value. They weren't hedging their bets against an examiner's OA,
they weren't "waiting for the industry to develop" or "lying in
wait." They simply didn't appreciate that it was an invention that
was worth claiming. To me, it's analogous to the situation in reissue
where patentee argues the mistake was their, or their attorney's,
failure to fully appreciate the scope of the invention.)
Under the new rules, how do I get those claims into application "D".
I can't file a continuation of "I" because "I" has already issued.
And supposedly I can't present them in "D" because "D" is only
supposed to contain claims directed to subject matter that was
restricted and not examined.
Can I get these claims? (Under the old rules, I certainly could
have.) If I can't, what is the PTO's justification for denying my
client something they would have been previously able to get? Is it
seriously the position of the PTO that my client can't get these
claims because they didn't claim them in "I"?
I'm really interested in your answer. And again, relax, I won't rely
on it as legal advice or advise anybody else to do so either.
JD
P.S. In all seriousness, this scenario has been debated back and
forth in our office for the past 6 weeks. An answer, even if
unofficial, would be much appreciated.
P.P.S. I'm well aware of the provisions of Rule 10.18. :-)
Emma Anne
>
> I'm really interested in your answer. And again, relax, I won't rely
> on it as legal advice or advise anybody else to do so either.
I'm really interested in this whole discussion. Thanks, guys.
Arnoud Engelfriet
Me too. I just had a very small request: could you guys delete
the pages and pages of quoted text you're not actually replying to?
That would make it so much easier to see the new stuff.
Arnoud
--
Arnoud Engelfriet, Dutch & European patent attorney - Speaking only for myself
Patents, copyright and IPR explained for techies: http://www.iusmentis.com/
Arnoud blogt nu ook: http://blog.iusmentis.com/
Steve Marcus
> On Oct 10, 6:55 pm, "Steve Marcus" <smarcus_spamo...@cox.net> wrote:
>> "JD" <johnnylar...@aol.com> wrote in message
>>
>> news:1192013278.2...@k79g2000hse.googlegroups.com...
>>
>> > On Oct 10, 5:42 am, "Steve Marcus" <smarcus_spamo...@cox.net> wrote:
>> >> "JD" <johnnylar...@aol.com> wrote in message
>>
>> >>news:1191980691.7...@57g2000hsv.googlegroups.com...
>>
>> >> > On Oct 9, 5:51 am, "Steve Marcus" <smarcus_spamo...@cox.net> wrote:
>> >> >> "Alun L. Palmer" <elekt...@yahoo.com> wrote in
>> >> >> messagenews:Xns99C398EFA463...@216.168.3.50...
>>
>> >> >> > "Steve Marcus" <smarcus_spamo...@cox.net> wrote in
>> >> >> >news:9KoOi.335280$dA7....@newsfe16.lga:
>>
>> >> >> >> "Emma Anne" <emma_a...@mac.com> wrote in message
>> >> >> >>news:1i5m9ux.u52nyx9kcvokN%emma...@mac.com...
>> >> >> >>> Steve Marcus <smarcus_spamo...@cox.net> wrote:
>>
>> >> >> >>>> "Emma Anne" <emma_a...@mac.com> wrote in message
>> >> >> >>>>news:1i5k829.1ekud6hznagebN%emma...@mac.com...
>> >> >> >>>> > Steve Marcus <smarcus_spamo...@cox.net> wrote:
>>
>> >> >> >>>> >> "Emma Anne" <emma_a...@mac.com> wrote in message
>> >> >> >>>> >>news:1i5ibz7.db5pw1jfm4i5N%emma...@mac.com...
>> >> >> >>>> >> > yp <y...@hotmail.com> wrote:
>>
>> >> >> <snip>
>
> Steve,
>
> Relax. I was just busting your chops. :-)
No worries. I hope that you understand that it was necessary for me to
check you out.
>
> There are a lot of serious questions raised by the new rules that
> remain unanswered. And the only conclusion many of us in private
> practice can conclude is that PTO management did not have the
> experience to foresee them. Just an opinion.
Actually, PTO management had, in my opinion, a complete understanding of
what the new rules would, and would not, mandate. However, it is, for
obvious reasons, impossible to anticipate all of the questions; what is
patent to same is not patent to others, who in turn would, perforce, as
questions.
The answer to this question appears on the PTO website, and was posted
9/27/07. I've provided the link so that you can verify what I've posted
below. The emphasis (**) has been added by me.
See:
http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/ccfrfaq.pdf
"C12. If applicant received a restriction requirement in the initial
application and elected invention "A" in the initial application, and then
applicant filed a divisional application that contains the claims to the
non-elected invention "B" that has not been examined, can applicant file two
continuation or CIP applications to present claims to the elected invention
"A" claiming the benefit to the divisional application and the initial
application? (Revised on 9/27/07)
No, the continuation applications claiming the benefit of divisional
application under 37 CFR 1.78(d)(1)(iii) cannot contain claims to an
invention other than the non-elected invention "B".
**However, applicant may file a single continuation application for
invention "A" claiming the benefit under 37 CFR 1.78(d)(1)(i) of the
divisional application and the initial application.** In this situation,
applicant may not file the second continuation application for invention "A"
claiming the benefit under 37 CFR 1.78(d)(1)(i) of the first continuation
application, the divisional application and the initial application because
37 CFR 1.78(d)(1)(i) permits a continuation or CIP application of an initial
application claiming the benefit of no more than two prior-filed
applications. Furthermore, applicant may only file one continuation
application for invention "B" claiming the benefit under 37 CFR
1.78(d)(1)(iii) of the divisional application.
In comparison, if applicant files the continuation applications directly
claiming the benefit of the initial application, applicant may file two
continuation or CIP applications of the initial application to present
claims to the elected invention "A". See 37 CFR 1.78(d)(1)(i). Furthermore,
applicant may file two continuation applications of the divisional
application to present claims to the non-elected invention "B". See 37 CFR
1.78(d)(1)(iii)."
The rationale here is important since I believe that an understanding of it
would clarify many potential questions.
1) 37 CFR 1.78(a)(3) defines a continuation application to be a continuing
application, as defined in 1.78(a)(1) "that discloses and claims only an
invention or inventions that were disclosed in the prior-filed application."
Thus, the continuation in the emphasized section of the answer above
satisfies the definition of continuation per 1.78(d)(1)(i), even though it
doesn't *claim* the same invention as in the immediate parent (the
divisional application), provided that the divsional application discloses
the invention claimed in the continuation (which it typically would do,
since it in turn is based on the grandparent application that did disclose
the invention now claimed in the continuation application).
2) As the continuation satisfies 1.78(d)(1)(i), it is unnecessary that it
satisfy the definition of continuation per 1.78(d)(1)(iii), which requires,
inter alia, that a continuation of a divisional application be a
nonprovisional application that "discloses and claims *only an invention or
inventions that were disclosed and claimed in such divisional application.*
3) Note that underlying points 1) and 2) above is this:
1.78(a)(3) defines what a continuation application is. 1.78(d)(1)(i) and
(iii) define when a continuation (as defined in 1.78(a)(3)) is entitled to
claim benefit of a prior nonprovisional application.
So the hypothetical continuation application *is* a continuation as per the
definition in the rules. It's just that under 37 CFR 1.78(d)(1)(iii), it
would never be permitted to make a benefit claim to being a continuation of
a divisional application because it's claiming a different invention than
that claimed in the divisional. It would, however, be entitled to make a
claim as a continuation of a divisional which in turn claims benefit of a
prior application under 1.78(d)(1)(i) because (d)(1)(i) does not require
that the the continuation disclose *and claim* benefit of the immediate
parent, but only that it claim an invention *disclosed* in the immediate
parent.
>
> Can I get these claims? (Under the old rules, I certainly could
> have.) If I can't, what is the PTO's justification for denying my
> client something they would have been previously able to get? Is it
> seriously the position of the PTO that my client can't get these
> claims because they didn't claim them in "I"?
Yes, for the reason noted above.
>
> I'm really interested in your answer. And again, relax, I won't rely
> on it as legal advice or advise anybody else to do so either.
You needn't rely on me as having given legal advice. It is PTO's legal
advice, and it's based on a hypothetical that I've seen.
>
> JD
>
> P.S. In all seriousness, this scenario has been debated back and
> forth in our office for the past 6 weeks. An answer, even if
> unofficial, would be much appreciated.
>
Steve
--
The above posting is neither a legal opinion nor legal advice,
because we do not have an attorney-client relationship, and
should not be construed as either. This posting does not
represent the opinion of my employer, but is merely my personal
view. To reply, delete _spamout_ and replace with the numeral 3
> P.P.S. I'm well aware of the provisions of Rule 10.18. :-)
>
Alun L. Palmer
As a matter of fact, the MPEP says that the examiner should search the
diclosure including things that might be claimed. I saw it in there just
the other day.
>>Of course, legally
>> speaking what's claimed is the invention, but the examiner should
>> understand that the originally filed claims are always broader than
>> the core of the invention. If a little time is taken to figure it out,
>> it shouldn't add any time to the search itself. But there we are,
>> talking about time again.
>
> With all due respect, the above paragraph is essentially crap. The
> examiner isn't required to waste time searching everything that's
> unclaimed on the "hunch" that you might decide to claim it.
Yes they are, it says so in the MPEP, in section 904.03:
It is normally not enough that references be selected to meet only
the terms of the claims alone, especially if only broad claims are
presented; but the search should, insofar as possible, also cover all
subject matter which the examiner reasonably anticipates might be
incorporated into applicant's amendment.
> I've a
> simplier idea; when you file an application, claim what you regard as
> being the invention, from the broadest claim you think might be
> patentable to the narrowest claim that you think it worthwhile to pay
> an issue fee for.
>
> <major snip>
>
> Steve
Once the search is done it can often turn out that what differentiates the
invention from the prior art wasn't claimed. It happens all the time. We
aren't omniscient.
OTOH, this is a diversion from talking about the case where the 1st OA is
so half-a**ed that it's a waste of a step in the prosecution process.
Alun L. Palmer
news:1192013278.2...@k79g2000hse.googlegroups.com:
I can help you find it, it's Topliss v, Topliss
Steve Marcus
Nice try. Why note quote the whole thing in context??
No, wht it actually says is what I said:
"It is a prerequisite to a speedy and just determination of the issues
involved in the examination of an application that a careful and
comprehensive search, commensurate with the limitations appearing in the
most detailed claims in the case, be made in preparing the first action on
the merits so that the second action on the merits can be made final or the
application allowed with no further searching other than to update the
original search. It is **normally** not enough that references be selected
to meet only the terms of the claims alone, especially if only broad claims
are presented; but the search should, **insofar as possible**, also cover
all subject matter which the examiner **reasonably** anticipates might be
incorporated into applicant's amendment. ***Applicants can facilitate a
complete search by including, at the time of filing, claims varying from the
broadest to which they believe they are entitled to the most detailed that
they would be willing to accept."*** [Emphasis supplied.]
As I've said, the examiner isn't required to guess what the invention might
be. It isn't always possible to search all unclaimed subject matter.
Sometimes it isn't reasonable for an examiner to anticipate (guess) what an
applicant will claim.
On the other hand, it is ***always*** true that if an applicant's claims run
from the broadest they believe they are entitled to, to the narrowest that
they would be willing to accept, you will get a complete search on the first
action.
In other words, the above quoted paragraph is comparable to the requirement
that an examiner not stop searching merely because a claim is technically
indefinite under 112, second paragraph, unless the claim is so indefinite
that it can't reasonably be understood. I've reversed examiners on
petitions alleging premature finals for that reason, but also sustained
examiners having made final rejections where it was essentially impossible,
after reading the claims and the disclosure, to understand what the heck was
really being claimed until after the amendment responding to the first
Office action had been filed. Similarly, I've reversed examiners who have
cited bad art, and then went out and got better art after minor claim
amendments, or who have stopped searching merely because the claims have
been met where it was pretty clear that a given broadly claimed feature of
the disclosed invention would be claimed in response to the first action
*and* there was an obvious spot (typically an indented subclass) that would
have yield art showing that feature in it narrowest (or even narrower) form.
But those situations were by far in the minority of what I encountered, and
I've no reason to believe that the sample size (the premature final
rejection petitions that I decided over the course of 12 or so years) wasn't
such as to yield pretty typical results. On the other hand the number of
times that claims were simply sloppily presented in what was obviously
overly broad language were far and away in the majority, and when it simply
wasn't clear which way an applicant would jump, and/or the applicant had a
large number of roads down which the claims could have been directed, I
would always sustain a 2nd action final where the applicant finally got
around to claiming things more rationally.
>> I've a
>> simplier idea; when you file an application, claim what you regard as
>> being the invention, from the broadest claim you think might be
>> patentable to the narrowest claim that you think it worthwhile to pay
>> an issue fee for.
As noted in the MPEP.
>> <major snip>
>>
>> Steve
Alun L. Palmer
The point is that the MPEP does require the examiner to search what is
disclosed as well as claimed, and what reasonably may be claimed after
amendment, in all cases, not merely where the claims are overly broad (just
especially, not exclusively).
On the one hand, the examiner may not always guess which way the
prosecution will go, and if a lot of different things are disclosed, then
that's OK.
OTOH, often it is very clear fromm the spec that something more specific is
shown that corresponds to a claimed element, and that particular something
hasn't been searched. Alternatively, there may be two ways to read a claim,
and the spec shows one but the examiner cites a reference showing the
other. The examiner should anticipate that the claims will be amended to
pin down what the spec shows, and the MPEP makes it clear that the first
search should try to accomplish this.
This is not a matter of claims of varying scope. Successive claims either
add elements or refine the structure or operation of elements. What they
don't do is word the same thing in different ways. Very typically, claims
have to be amended not to add limitations contemplated by the invention,
although that is done too, but to exclude found references that differ from
the disclosed invention in ways that the inventor never considered.
For example, the examiner may find references that have parts connected
back to front compared to the invention, so that their principle of
operation is entirely different, and the claims may read on the backwards
version unless amended. In such a hypothetical (although common) example,
the problem is that the examiner may stop searching when the backwards or
upside down reference is found, without looking for one the right way
around (as shown in all the drawings) until after the claims are amended
and the second search is done, contrary to what the MPEP recommends.
Hopefully this is not too convoluted (or vague) an example, but things
similar to this happen all the time. It is likely that time constraints are
the cause, but it isn't because the MPEP doesn't tell them to search the
disclosure. It does.
Steve Marcus
No. The MPEP requires a search of the disclosure in limited situations, no
as a matter of course. And may "reasonably" be claimed leaves room for
plenty of discretion.
>
> On the one hand, the examiner may not always guess which way the
> prosecution will go, and if a lot of different things are disclosed, then
> that's OK.
>
> OTOH, often it is very clear fromm the spec that something more specific
> is
> shown that corresponds to a claimed element, and that particular something
> hasn't been searched.
Irrelevant. The issue is whether or not the examiner may "reasonably"
anticipate that the "more specific" something is going to be claimed.
> Alternatively, there may be two ways to read a claim,
> and the spec shows one but the examiner cites a reference showing the
> other. The examiner should anticipate that the claims will be amended to
> pin down what the spec shows, and the MPEP makes it clear that the first
> search should try to accomplish this.
Why? At this point, you are simply gainsaying what I've written, and what
is clearly expressed in the MPEP.
>
> This is not a matter of claims of varying scope.
Of course it is. The previously unclaimed subject matter in your
immediately preceding paragraph amounts to an unclaimed embodiment, which,
when claimed after first action and the responsive amendment, is actually a
broadening of what was originally claimed in the application.
> Successive claims either
> add elements or refine the structure or operation of elements. What they
> don't do is word the same thing in different ways. Very typically, claims
> have to be amended not to add limitations contemplated by the invention,
> although that is done too, but to exclude found references that differ
> from
> the disclosed invention in ways that the inventor never considered.
And so...?
>
> For example, the examiner may find references that have parts connected
> back to front compared to the invention, so that their principle of
> operation is entirely different, and the claims may read on the backwards
> version unless amended. In such a hypothetical (although common) example,
> the problem is that the examiner may stop searching when the backwards or
> upside down reference is found, without looking for one the right way
> around (as shown in all the drawings) until after the claims are amended
> and the second search is done, contrary to what the MPEP recommends.
And this might be a situation in which the examiner should not have stopped
searching. Congratulations, you finally got one right.
>
> Hopefully this is not too convoluted (or vague) an example, but things
> similar to this happen all the time. It is likely that time constraints
> are
> the cause, but it isn't because the MPEP doesn't tell them to search the
> disclosure. It does.
It does, with several caveats. The fact that you continue to ignore the
implication and intent of those caveats is, quite frankly, telling with
respect to the strength of your position.
Alun L. Palmer
No. Look at section 904. It yalks about searching the claims and the
disclosure, not just the claims. This is even found in other places outside
chapter 900 as well.
> And may "reasonably" be claimed
> leaves room for plenty of discretion.
>
Say that the spec shows a widget with a screw and I claim a widget wuth a
fastener, as I properly should, and arguendo I don't have enough claims
left within 5/25 to add a dependent claim to a widget with a screw, and the
examiner cites a widget with a nail and doesn't search widgets with screws.
Is that within such discretion? No, it isn't, because it can be reasonably
anticipated that the claim will be narrowed to what is shown..
Does the examiner have time to do the additional search? Maybe not, but
that's not what the MPEP asks.
>>
>> On the one hand, the examiner may not always guess which way the
>> prosecution will go, and if a lot of different things are disclosed,
>> then that's OK.
>>
>> OTOH, often it is very clear fromm the spec that something more
>> specific is shown that corresponds to a claimed element, and that
>> particular something hasn't been searched.
>
> Irrelevant. The issue is whether or not the examiner may "reasonably"
> anticipate that the "more specific" something is going to be claimed.
>
>> Alternatively, there may be two ways to read a claim, and the spec
>> shows one but the examiner cites a reference showing the other. The
>> examiner should anticipate that the claims will be amended to pin down
>> what the spec shows, and the MPEP makes it clear that the first search
>> should try to accomplish this.
>
> Why? At this point, you are simply gainsaying what I've written, and
> what is clearly expressed in the MPEP.
>
>>
>> This is not a matter of claims of varying scope.
>
> Of course it is. The previously unclaimed subject matter in your
> immediately preceding paragraph amounts to an unclaimed embodiment,
> which, when claimed after first action and the responsive amendment, is
> actually a broadening of what was originally claimed in the
> application.
>
No. Dependent claims must further define pver the claims from which they
depend, and now we have the 5/25 limit. If you have 5 independents, then
each can only have an average of 4 dependents. If claim 2 adds x, 3 adds y,
4 adds z and 5 defines z as z', and 6-25 are your other 4 claim sets, then
if you need x and y to distinguish you add 2 and 3 into claim 1, but if the
examiner cites a widget with x on top of y and yours has y on top of x,
then you have to add that from the spec. If your claim 3 had initially
claimed that y was on yop of x it would have been too narrow. The second
scenario represebts real prosecution, wheras the version where evrything is
claimed in advance is pie-in-the-sky.
Steve Marcus
?? Are you arguing with a direct quotation from the MPEP? What part of this
don't you understand:
It is a prerequisite to a speedy and just determination of the issues
involved in the examination of an application that a careful and
comprehensive search, commensurate with the limitations appearing in the
most detailed claims in the case, be made in preparing the first action on
the merits so that the second action on the merits can be made final or the
application allowed with no further searching other than to update the
original search. It is **normally** not enough that references be selected
to meet only the terms of the claims alone, especially if only broad claims
are presented; but the search should, **insofar as possible**, also cover
all subject matter which the examiner **reasonably** anticipates might be
incorporated into applicant's amendment. ***Applicants can facilitate a
complete search by including, at the time of filing, claims varying from the
broadest to which they believe they are entitled to the most detailed that
they would be willing to accept."*** [Emphasis supplied.]
I suggest that you aren't supposed to read the emphasized matter above out
of the text, but should consider its plain meaning.
>> And may "reasonably" be claimed
>> leaves room for plenty of discretion.
>>
>
> Say that the spec shows a widget with a screw and I claim a widget wuth a
> fastener, as I properly should, and arguendo I don't have enough claims
> left within 5/25 to add a dependent claim to a widget with a screw, and
> the
> examiner cites a widget with a nail and doesn't search widgets with
> screws.
> Is that within such discretion? No, it isn't, because it can be reasonably
> anticipated that the claim will be narrowed to what is shown..
Perhaps. But that's one example. There are countless others (including
situations in which the specific species is/are never claimed
nothwithstanding the presentation of 70 or so claims. Remember this: you
are dealing with the applications that *you* prosecute. I can guarantee
that I examined and otherwise read many, many more applications than you've
filed, and that I've seen the work product of more than a single
practitioner. My sample size is larger, and broader, than your sample size.
>
> Does the examiner have time to do the additional search? Maybe not, but
> that's not what the MPEP asks.
Try looking up the definition of the word "reasonably," and get back to me
if you don't think that the amount of time to devote, on the average, to
searching applications is a factor in determining how long an examiner will
spend searching for a particular species that remains unclaimed despite the
presentation of 70 claims on filing.
You are, of course, neglecting how 4 independent claims can seriously
present a very good range of broadest to narrowest claims, even before one
considers the dependent claims. And you are, of course, failing to construe
the current MPEP section in question with a practice that did not limit the
presentation of claims to 5/25. Other than that, your position is *very*
worthwhile.
At this point, I'm getting bored with the discussion. If you aren't going
to actually credit the MPEP with what it *does* say, notwithstanding that
it's been directly quoted, then there's not point to the discussion. Feel
as you wish to feel, it won't change the way PTO does business, in large
part because the presentation of arguments such as you have done in your
last couple of posts, which are clearly inaccurate in large part and are
neglectful of what the actual examining practice *is* simply serve to turn
off the party you're trying to persuade. If you read through the comments
to the Claims/Continuations package, you'll understand the impact of doing
that has on folks in general, and on PTO in particular.
>>
>> Steve
Tim Jackson
[quoting MPEP]
> ***Applicants can facilitate a
> complete search by including, at the time of filing, claims varying from the
> broadest to which they believe they are entitled to the most detailed that
> they would be willing to accept."*** [Emphasis supplied.]
Unfortunately, the USPTO is restricting the applicant's ability to do
that, by restricting the number of claims that may be filed.
--
Tim Jackson
ne...@timjackson.plus.invalid
(Change '.invalid' to '.com' to reply direct)
Steve Marcus
"Tim Jackson" <ne...@timjackson.plus.invalid> wrote in message
news:MPG.217f3f8ea...@text.usenet.plus.net...
> On Tue, 16 Oct 2007 06:03:12 -0400, Steve Marcus wrote...
> [quoting MPEP]
>> ***Applicants can facilitate a
>> complete search by including, at the time of filing, claims varying from
>> the
>> broadest to which they believe they are entitled to the most detailed
>> that
>> they would be willing to accept."*** [Emphasis supplied.]
>
> Unfortunately, the USPTO is restricting the applicant's ability to do
> that, by restricting the number of claims that may be filed.
There are two answers to this:
1) There is something called an Examiner Support Document (ESD). You may
file one of those, and put in however many claims are necessary. In
speaking with practitioners, I have found quite a few who do not find the
ESD something that is either particularly strange or different relative to
the presently existing duty of disclosure, or all that difficult to do.
Thus, the restriction you speak of is something that does not necessarily
exist.
2) In what way does limiting a practitioner to 5 independent claims and a
total of 25 claims preclude one of the independent claims from being the
broadest claim that the practitioner and client reasonably believes to be
patentable and the narrowest claim that would be worthwhile having so as to
justify paying the issue fee? Again, in actually speaking with
practitioners, none has been able to answer that question, and many who have
answered it have agreed that 5/25 does not render it either impossible, or
all that difficult, to include both the broadest and the narrowest claims,
plus a sufficient variation in scope between the two extremes.
>
> --
> Tim Jackson
> ne...@timjackson.plus.invalid
> (Change '.invalid' to '.com' to reply direct)
Steve
yp
> On Tue, 16 Oct 2007 06:03:12 -0400, Steve Marcus wrote...
>
> [quoting MPEP]
>
> > ***Applicants can facilitate a
> > complete search by including, at the time of filing, claims varying from the
> > broadest to which they believe they are entitled to the most detailed that
> > they would be willing to accept."*** [Emphasis supplied.]
>
> Unfortunately, the USPTO is restricting the applicant's ability to do
> that, by restricting the number of claims that may be filed.
>
> --
> Tim Jackson
When I was a young fellow learning patent law and practice, the
attorney who was teaching me told me that if a patent practitioner
can't claim an invention within 10 claims, then either the invention
is not very good or the practitioner in not very good. This stuck in
my mind since then, and I am always trying to minimize the number of
claims in an application. This in fact is easier in EPO applications
where multiple dependencies are allowed and are common.
In any event, if there is a really complex and lengthy application
where more than 5 independent and 25 dependent claims are needed, I
don't see any reason for not filing two or more applications
simultaneously to cover the additional subject matter.
Emma Anne
>
> In any event, if there is a really complex and lengthy application
> where more than 5 independent and 25 dependent claims are needed, I
> don't see any reason for not filing two or more applications
> simultaneously to cover the additional subject matter.
The new rules make that more difficult as well - precisely because they
don't *want* you getting aaround the limited number of claims by filing
related applications.
Emma Anne
> 1) There is something called an Examiner Support Document (ESD). You may
> file one of those, and put in however many claims are necessary. In
> speaking with practitioners, I have found quite a few who do not find the
> ESD something that is either particularly strange or different relative to
> the presently existing duty of disclosure, or all that difficult to do.
> Thus, the restriction you speak of is something that does not necessarily
> exist.
Really? The attorneys I have talked to about this have all said they
will try never to file an ESD, because you need to make a bunch of
admissions to the PTO about prior art. I don't know anyone who does
that now.
Tim Jackson
> 2) In what way does limiting a practitioner to 5 independent claims and a
> total of 25 claims preclude one of the independent claims from being the
> broadest claim that the practitioner and client reasonably believes to be
> patentable and the narrowest claim that would be worthwhile having so as to
> justify paying the issue fee?
Alun's last post gave you an example.
Steve Marcus
And in how many instances will the admissions actually be damaging? Or is
the position taken by these attorneys that it would be okay to do a search
of the prior art, find some material to patentability, but not state that
the prior art is material enough to defeat patentability and instead just
file such unpatentable claims anyway? Is that how business is done with
respect to current IDS practice - just cite the search results and file
claims even where the results would defeat patentability for a majority of
such claims?
On the other hand, if I do an ESD and file claims that are patentable over
the furnished art, what damaging admission have I made?
Steve Marcus
"Tim Jackson" <ne...@timjackson.plus.invalid> wrote in message
> On Wed, 17 Oct 2007 05:08:50 -0400, Steve Marcus wrote...
>> 2) In what way does limiting a practitioner to 5 independent claims and
>> a
>> total of 25 claims preclude one of the independent claims from being the
>> broadest claim that the practitioner and client reasonably believes to be
>> patentable and the narrowest claim that would be worthwhile having so as
>> to
>> justify paying the issue fee?
>
> Alun's last post gave you an example.
With which I don't agree. My point is that it's surely possible to presnet
the narrowest potentially valuable claim, and the broadest potentially
patentable claim. That's just two claims. You still have another 23 to
play with.
>
> --
> Tim Jackson
Steve
--
The above posting is neither a legal opinion nor legal advice,
because we do not have an attorney-client relationship, and
should not be construed as either. This posting does not
represent the opinion of my employer, but is merely my personal
view. To reply, delete _spamout_ and replace with the numeral 3
Steve Marcus
"yp" <yp...@hotmail.com> wrote in message
news:1192634616.0...@k35g2000prh.googlegroups.com...
You'll be okay, provided that the two applications do not claim at least one
claim that is patentably indistinct from the claims of the other
application. It may be better to file a single application with a suggested
restriction requirement. Restricted claims are patentably distinct claims.
Alun L. Palmer
No. I beleive I was quoting it at you.
> It is a prerequisite to a speedy and just determination of the issues
> involved in the examination of an application that a careful and
> comprehensive search, commensurate with the limitations appearing in
> the most detailed claims in the case, be made in preparing the first
> action on the merits so that the second action on the merits can be
> made final or the application allowed with no further searching other
> than to update the original search. It is **normally** not enough that
> references be selected to meet only the terms of the claims alone,
> especially if only broad claims are presented; but the search should,
> **insofar as possible**, also cover all subject matter which the
> examiner **reasonably** anticipates might be incorporated into
> applicant's amendment. ***Applicants can facilitate a complete search
> by including, at the time of filing, claims varying from the broadest
> to which they believe they are entitled to the most detailed that they
> would be willing to accept."*** [Emphasis supplied.]
>
For example, I suggest that "It is normally not enough that
references be selected to meet only the terms of the claims alone" cannot
be read as "It is normally enough that references be selected to meet only
the terms of the claims alone" without the "not" as you seem to do.
> I suggest that you aren't supposed to read the emphasized matter above
> out of the text, but should consider its plain meaning.
>
Seems plain to me.
>>> And may "reasonably" be claimed
>>> leaves room for plenty of discretion.
>>>
>>
>> Say that the spec shows a widget with a screw and I claim a widget
>> wuth a fastener, as I properly should, and arguendo I don't have
>> enough claims left within 5/25 to add a dependent claim to a widget
>> with a screw, and the examiner cites a widget with a nail and doesn't
>> search widgets with screws. Is that within such discretion? No, it
>> isn't, because it can be reasonably anticipated that the claim will be
>> narrowed to what is shown..
>
> Perhaps. But that's one example. There are countless others
> (including situations in which the specific species is/are never
> claimed nothwithstanding the presentation of 70 or so claims.
> Remember this: you are dealing with the applications that *you*
> prosecute. I can guarantee that I examined and otherwise read many,
> many more applications than you've filed, and that I've seen the work
> product of more than a single practitioner. My sample size is larger,
> and broader, than your sample size.
>
I am trying to give an example of the kind of thing that I do encounter
>>
>> Does the examiner have time to do the additional search? Maybe not,
>> but that's not what the MPEP asks.
>
> Try looking up the definition of the word "reasonably," and get back to
> me if you don't think that the amount of time to devote, on the
> average, to searching applications is a factor in determining how long
> an examiner will spend searching for a particular species that remains
> unclaimed despite the presentation of 70 claims on filing.
>
It talks about what the examiner reasonably anticipates might be claimed
after amendment, not what he reasonably has time to look for.
In the real world the subject matter needed to distinguish often falls
inbetween the scope of sucessive claims, for those of us who aren't crystal
ball owners.
> At this point, I'm getting bored with the discussion. If you aren't
> going to actually credit the MPEP with what it *does* say,
> notwithstanding that it's been directly quoted, then there's not point
> to the discussion. Feel as you wish to feel, it won't change the way
> PTO does business, in large part because the presentation of arguments
> such as you have done in your last couple of posts, which are clearly
> inaccurate in large part and are neglectful of what the actual
> examining practice *is* simply serve to turn off the party you're
> trying to persuade. If you read through the comments to the
> Claims/Continuations package, you'll understand the impact of doing
> that has on folks in general, and on PTO in particular.
>>>
>>> Steve
>
> Steve
I directly quoted it to you. We are argiung about what it means. Of course,
if this were a paper I was filing I would act like I beleived you were
being reasonable!
Alun
Alun L. Palmer
The ESD is vey onerous.
Alun L. Palmer
That isn't the problem. If a court holds that a reference meets the
reasonable examiner standard without being good enough to invalidate the
claims, and we fail to find some obscure passage that raises it to that low
standard, then the infringer has an inequitable conduct defence, even
though the reference isn't good enough to anticipate the invention, and
then the patent is invalidated for inequitable conduct. The ESD leads us
into that trap.
Now, if you could make the inequitable conduct quagmire go away you might
have a point. The Patent Reform bill tries to restrict jurisdiction over
inequitable conduct to within the PTO, but it still isn't law last time I
checked.
Steve Marcus
Then lobby the Congress to fix the inequitable conduct issue. I know for a
fact that USPTO has proposed amendments to the statutes that would do so. I
helped draft one of them.
>
> Now, if you could make the inequitable conduct quagmire go away you might
> have a point. The Patent Reform bill tries to restrict jurisdiction over
> inequitable conduct to within the PTO, but it still isn't law last time I
> checked.
See above.
Steve Marcus
If by onerous, you mean expensive, I would agree that it may be in many
instances. On the other hand, I've spoken with enough practitioners who are
of the opinion that the ESD is not the boogey man that it others claim it to
be.
And more importantly, at the end of the day, there is still the matter of
just how impossible or difficult it _really_ is to comply with the 5/25
requirement, and still afford a client adequate protection. I can see that
it might present a problem in a small minority of instances, but not in
most. Frankly, practitioners have, for too long a time, ignored the
practice of starting prosecution out as recommended in MPEP 904.03:
"Applicants can facilitate a complete search by including, at the time of
filing, claims varying from the broadest to which they believe they are
entitled to the most detailed that they would be willing to accept."
After all, why should practitioners have bothered to do things that way,
which IMHO, is the correct way to do it if one is zealously **and**
competently representing the client? They could just write the claims
broadly. Then amend a bit (ca-ching goes the cash register). If they
received a final on the 2nd action after narrowing the claims a bit, they
could file another amendment (or two) and...ca-ching goes the cash register.
Blame it all on "that damned examiner and USPTO practice" when those
amendments are not entered. Then file a continuing application (or, in more
modern times, an RCE and ca-ching goes the cash register). Repeat the
process.
Now practitioners have a reason to do it properly, and it will work to
benefit the client (in most instances), and the system in all instances. In
the minority of cases, the client's interest will demand the filing of more
claims, and paying for an ESD. If the client wants competent and zealous
representation, then the client will have to pay. Presumably, such payment
is an investment in a property (the patent) that will pay a return on the
investment.
In short, it's easy to complain, but it isn't, IMHO, very easy to defend the
positions being taken by those doing the complaining.
Steve Marcus
If the broader of two successive claims is patentable, then you didn't need
a crystal ball; all narrower variations are covered by that broader claim.
So one wonders why one would, at the time of prosecuting the application,
one would present an unpatentable claim.
Therefore, the scenario that you present must reasonably be that the
unpatentability doesn't become apparent until one attempts to enforce the
patent (newly discovered reference rears its ugly head), and the narrower
(presumably patentable) claim is too narrow. Then one might consider filing
a reissue application, mightn't one?
Further, if I had to put a probability on this scenario, I wouldn't use the
term "often." I see a large number of allowed reissue applications every
year, and the number of them that allege that one or more patent claims are
too broad can be counted on less then both hands. What I do see a lot of
are attempts to use reissue to "spruce up" a patent for litigation by adding
claims of intermediate or narrower scope than the broader patent claims,
**without** alleging that the broader claims are unpatentable and the
patentee claimed more than s/he had a right to claim. (This sort of reissue
application does not, in my opinion, present a reissuable error.)
>
>> At this point, I'm getting bored with the discussion. If you aren't
>> going to actually credit the MPEP with what it *does* say,
>> notwithstanding that it's been directly quoted, then there's not point
>> to the discussion. Feel as you wish to feel, it won't change the way
>> PTO does business, in large part because the presentation of arguments
>> such as you have done in your last couple of posts, which are clearly
>> inaccurate in large part and are neglectful of what the actual
>> examining practice *is* simply serve to turn off the party you're
>> trying to persuade. If you read through the comments to the
>> Claims/Continuations package, you'll understand the impact of doing
>> that has on folks in general, and on PTO in particular.
>>>>
>>>> Steve
>>
>> Steve
>
> I directly quoted it to you. We are argiung about what it means. Of
> course,
> if this were a paper I was filing I would act like I beleived you were
> being reasonable!
If you quoted the entire paragraph that I quoted, I must have missed it.
But even if you did quote it, you are arguing that its mandate to search
beyond the actual claims into what the disclosure is absolute, and it is
_far_ from absolute. It is qualified, and quite plainly so. You have also
ignored, until the your last post, the impact of the statement that claims
should be filed from the beginning that represent the broadest scope that
might reasonably be patentable to the narrowest acceptable scope.
>
> Alun
Alun L. Palmer
Because we don't have a crystal ball to see the results of the examiner's
search, or the strange and unforeseen ways that the examiner will interpret
the claims
> Therefore, the scenario that you present must reasonably be that the
> unpatentability doesn't become apparent until one attempts to enforce
> the patent (newly discovered reference rears its ugly head), and the
> narrower (presumably patentable) claim is too narrow. Then one might
> consider filing a reissue application, mightn't one?
>
Not if we can amend while the application is stil pending, no
> Further, if I had to put a probability on this scenario, I wouldn't use
> the term "often." I see a large number of allowed reissue applications
> every year, and the number of them that allege that one or more patent
> claims are too broad can be counted on less then both hands. What I do
> see a lot of are attempts to use reissue to "spruce up" a patent for
> litigation by adding claims of intermediate or narrower scope than the
> broader patent claims, **without** alleging that the broader claims are
> unpatentable and the patentee claimed more than s/he had a right to
> claim. (This sort of reissue application does not, in my opinion,
> present a reissuable error.)
>
I have dealt with reissues, but it is something we try to avoid because of
the high fees
>>
>>> At this point, I'm getting bored with the discussion. If you aren't
>>> going to actually credit the MPEP with what it *does* say,
>>> notwithstanding that it's been directly quoted, then there's not
>>> point to the discussion. Feel as you wish to feel, it won't change
>>> the way PTO does business, in large part because the presentation of
>>> arguments such as you have done in your last couple of posts, which
>>> are clearly inaccurate in large part and are neglectful of what the
>>> actual examining practice *is* simply serve to turn off the party
>>> you're trying to persuade. If you read through the comments to the
>>> Claims/Continuations package, you'll understand the impact of doing
>>> that has on folks in general, and on PTO in particular.
>>>>>
>>>>> Steve
>>>
>>> Steve
>>
>> I directly quoted it to you. We are argiung about what it means. Of
>> course, if this were a paper I was filing I would act like I beleived
>> you were being reasonable!
>
> If you quoted the entire paragraph that I quoted, I must have missed
> it. But even if you did quote it, you are arguing that its mandate to
> search beyond the actual claims into what the disclosure is absolute,
> and it is _far_ from absolute. It is qualified, and quite plainly so.
But not as qualified as you say it is
> You have also ignored, until the your last post, the impact of the
> statement that claims should be filed from the beginning that represent
> the broadest scope that might reasonably be patentable to the narrowest
> acceptable scope.
>
>>
>> Alun
>
> Steve
Even if we do that, we still have to amend for unforeseen art. Largely
speaking, this is because the examiners cite references that are outside
the field of the invention, which the patent owner has no interest in
covering.
When we write claims for a building construction we have no interest in
whether it can be read onto a cuphook by setting aside the preamble, and a
court wouldn't find the cuphook infringing, but we must amend around the
cuphook due to 'broadest reasonable interpretation'.
That is the kind of thing that happens in real life. It would be easy if we
could just drop back to the next narrower claim, but it is rarely possible,
and when possible is seldom advisable, as we are obligated to go for the
broadest claim we can get.
Clearly, we will never see eye to eye, but it is just as clear that the
vast majority of people with a reg. no. do not agree with the PTO on the
new rules. The number of adverse comments has been very high, as I'm sure
you well know.
Alun
Alun L. Palmer
I would have thought that the PTO position was harder to defend. I have no
shortage of reasons why I think the new rules are problematic. I have
described various scenarios where the allowed claims won't fall within the
original claims and explained why, but it seems to be water off a duck's
back, i.e. you either ignore them or suggest we file a reissue (which I
find particularly hilarious - lots more money for the PTO).
Everyone I know writes broad claims and adds dependent claims to further
features. If we don't write multiple claims that define the same thing in
different ways, that's because under present claim drafting rules these
would have to be additional sets of claims depending from a new independent
claim, and independent claims in excess of three are expensive.
I don't see the 5 independent claim rule as a problem, it's the 25 claim
part of it that's the problem for me. Of course, those in the chemical art
may not agree, but I only deal with electrical and mechanical art. I
usually end up with at least two independent claims, and usually no more
than 20 total. However, it's easy to exceed 25 to get proper coverage,
except now that will be a problem. You seem to be asking us to provide more
coverage with fewer claims????
Alun
Alun L. Palmer
It seems to me that the PTO is jumping the gun by creating an inequitable
conduct problem without getting the statute fixed first.
Steve Marcus
> "Steve Marcus" <smarcus_...@cox.net> wrote in
> news:Qn3Si.3099$KX4....@newsfe14.lga:
>
>>
>> "Alun L. Palmer" <elek...@yahoo.com> wrote in message
>> news:Xns99CDE7613936...@216.168.3.50...
>>> "Steve Marcus" <smarcus_...@cox.net> wrote in
>>> news:RawRi.2442$e37....@newsfe20.lga:
>>>
>>>>
>>>> "Emma Anne" <emma...@mac.com> wrote in message
>>>> news:1i64v9a.11mb71518rb6cnN%emma...@mac.com...
>>>>> Steve Marcus <smarcus_...@cox.net> wrote:
>>>>>
<snip>
>>>
>>> That isn't the problem. If a court holds that a reference meets the
>>> reasonable examiner standard without being good enough to invalidate
>>> the claims, and we fail to find some obscure passage that raises it to
>>> that low standard, then the infringer has an inequitable conduct
>>> defence, even though the reference isn't good enough to anticipate the
>>> invention, and then the patent is invalidated for inequitable conduct.
>>> The ESD leads us into that trap.
>>
>> Then lobby the Congress to fix the inequitable conduct issue. I know
>> for a fact that USPTO has proposed amendments to the statutes that
>> would do so. I helped draft one of them.
>>
>>>
>>> Now, if you could make the inequitable conduct quagmire go away you
>>> might have a point. The Patent Reform bill tries to restrict
>>> jurisdiction over inequitable conduct to within the PTO, but it still
>>> isn't law last time I checked.
>>
>> See above.
>>
>> Steve
>
> It seems to me that the PTO is jumping the gun by creating an inequitable
> conduct problem without getting the statute fixed first.
What makes you think that PTO hasn't been proposing this "fix," and
supporting the attempts of others to do so, long prior to this rule package
being proposed? But time waits for no man, and for no government agency
....
Steve Marcus
Do really think that PTO cares about encouraging more reissue applications
to be file to make lots more money??? There aren't that many of them filed
in a given year.
As to "why allowed claims won't fall within the original claims," I don't
understand what you even mean by that.
Your position is taken as one of self-interest. There's nothing
particularly wrong with that, but you don't seem willing to consider that
PTO's position is taken out of "self-interest" in the sense that the system
is heading down a road in which the examination system will simply not be
able continue to work effectively. Period.
>
> Everyone I know writes broad claims and adds dependent claims to further
> features. If we don't write multiple claims that define the same thing in
> different ways, that's because under present claim drafting rules these
> would have to be additional sets of claims depending from a new
> independent
> claim, and independent claims in excess of three are expensive.
>
> I don't see the 5 independent claim rule as a problem, it's the 25 claim
> part of it that's the problem for me. Of course, those in the chemical art
> may not agree, but I only deal with electrical and mechanical art. I
> usually end up with at least two independent claims, and usually no more
> than 20 total. However, it's easy to exceed 25 to get proper coverage,
> except now that will be a problem. You seem to be asking us to provide
> more
> coverage with fewer claims????
No... PTO is asking you to file, for a given invention, an application that
contains no more than 5 independent claims and no more than 25 total claims,
which include the broadest claim that you can reasonably expect to be
patentable to the narrowest claim that it would be worth having (can't
easily be engineered around). Or, where you don't want to spend the money
doing a pre-ex search and analyzing the results sufficiently to do that, to
instead file whatever the heck number of claims you want, but pay to do an
ESD.
>
> Alun
Steve Marcus
I haven't really said anything specific, and I have been polite enough not
to point out that you have mischaracterized my position. All I said was:
"As I've said, the examiner isn't required to guess what the invention might
be. It isn't always possible to search all unclaimed subject matter.
Sometimes it isn't reasonable for an examiner to anticipate (guess) what an
applicant will claim."
And I've also said that the MPEP section should not be taken as a license to
play games and delay claiming important elements of the disclosure.
Once again, what the MPEP does say is:
"It is **normally** not enough that references be selected to meet only the
terms of the claims alone, especially if only broad claims are presented;
but the search should, **insofar as possible**, also cover all subject
matter which the examiner **reasonably** anticipates might be incorporated
into applicant's amendment. ***Applicants can facilitate a complete search
by including, at the time of filing, claims varying from the broadest to
which they believe they are entitled to the most detailed that they would be
willing to accept."*** [Emphasis supplied.]
It is not reasonable to ask an examiner to search 15 unclaimed limitations.
The examiner can't know which are regarded as being important, and is
entitled to assume that if you present 30 claims without reciting any of
those limitations in detail, that you don't particularly care to claim them.
If you can't live with that analysis, frankly, that's too damned bad. In my
view, and in the view of a significant number of patent examiners, you are
simply playing games with your claim program in that sort of scenario. And
in my view, you ought to be claiming what you intend to protect, as narrowly
as it would be worthwhile to pay an issue fee for, as well as broader
claims. If you weren't before these rules, it seems to me that you ought to
reconsider your philosophy and start doing so. Or, get proficient writing
and filing ESDs.
>
>> You have also ignored, until the your last post, the impact of the
>> statement that claims should be filed from the beginning that represent
>> the broadest scope that might reasonably be patentable to the narrowest
>> acceptable scope.
>>
>>>
>>> Alun
>>
>> Steve
>
> Even if we do that, we still have to amend for unforeseen art. Largely
> speaking, this is because the examiners cite references that are outside
> the field of the invention, which the patent owner has no interest in
> covering.
No you are just dithering. If the art is outside of the field of the
invention, and is not anticipatory, then section 103 rejections ought not to
be available. If the art is anticipatory, then you've claimed way too
broadly, haven't you? And please don't start crying that the examiners will
make the bad rejections anyway. Appeal bad rejections, early and often, and
you should be fine.
>
> When we write claims for a building construction we have no interest in
> whether it can be read onto a cuphook by setting aside the preamble, and a
> court wouldn't find the cuphook infringing, but we must amend around the
> cuphook due to 'broadest reasonable interpretation'.
Yeah, but what "you" have an interest in is legally irrelevant in terms of a
claim reading completely on a single reference; such a claim is anticipated
and unpatentable under Section 102. Of course, that assumes that the
examiner's interpretation is reasonable, as well as broad. Again, if it's
not, why are you amending at all? Appeal.
>
> That is the kind of thing that happens in real life. It would be easy if
> we
> could just drop back to the next narrower claim, but it is rarely
> possible,
> and when possible is seldom advisable, as we are obligated to go for the
> broadest claim we can get.
>
> Clearly, we will never see eye to eye, but it is just as clear that the
> vast majority of people with a reg. no. do not agree with the PTO on the
> new rules. The number of adverse comments has been very high, as I'm sure
> you well know.
I have no question that plenty of practitioners will feel as though PTO is
reaching into their pockets. In many cases, those practitioners deserve to
have to change the way that they do business. I have little sympathy for
such practitioners.
I believe that in many cases, practitioners will have no problem at all
serving clients effectively and zealously under the new rules.
Alun L. Palmer
I don't doubt that, but the ESD without this reform in the law leaves all
of us in a 'fix'
Alun L. Palmer
I agree that it's all about self-interest in both directions. The PTO is
trying to dump it's problems on applicants, and that's why we're all
hopping mad about it. However, I doubt that these measures will even work.
It's like a drowning man clutching at a straw. The outside review was very
telling, particularly the part about the PTO revising it's method of
setting hiring targets because it was on longer possible to even train the
number of people that would be needed. The PTO is about to implode, and is
reacting by essentially trying to discourage everything, ultimately hoping
that people will file fewer applications.
>>
>> Everyone I know writes broad claims and adds dependent claims to
>> further features. If we don't write multiple claims that define the
>> same thing in different ways, that's because under present claim
>> drafting rules these would have to be additional sets of claims
>> depending from a new independent claim, and independent claims in
>> excess of three are expensive.
>>
>> I don't see the 5 independent claim rule as a problem, it's the 25
>> claim part of it that's the problem for me. Of course, those in the
>> chemical art may not agree, but I only deal with electrical and
>> mechanical art. I usually end up with at least two independent claims,
>> and usually no more than 20 total. However, it's easy to exceed 25 to
>> get proper coverage, except now that will be a problem. You seem to be
>> asking us to provide more coverage with fewer claims????
>
> No... PTO is asking you to file, for a given invention, an application
> that contains no more than 5 independent claims and no more than 25
> total claims, which include the broadest claim that you can reasonably
> expect to be patentable to the narrowest claim that it would be worth
> having (can't easily be engineered around). Or, where you don't want
> to spend the money doing a pre-ex search and analyzing the results
> sufficiently to do that, to instead file whatever the heck number of
> claims you want, but pay to do an ESD.
>>
>> Alun
>
> Steve
I am in favour of searches, it's the clients who usually aren't. OTOH, ESD
requirements, particularly if linked to IDS requirements, will ultimately
lead us to prefer searchers who report only the best art, with a numerical
limit on the maximum number of references they cite. I know a search firm
that already offers to report only the best six references for a low fixed
price. They intend that as a budget search, but it's looking like an
attractive service if we have to draw a claim chart of every reference they
find. Any more references would be uneconomical.
Alun L. Palmer
It's cheaper in many cases to amend around even unfounded rejections. Also,
some of the foreign clients are used to much lower success rates for
appeals in their own countries and regard an appeal as a lost cause. In
many cases we would rather file an appeal but the clients won't authorise
it.
Emma Anne
> I am in favour of searches, it's the clients who usually aren't. OTOH, ESD
> requirements, particularly if linked to IDS requirements, will ultimately
> lead us to prefer searchers who report only the best art, with a numerical
> limit on the maximum number of references they cite. I know a search firm
> that already offers to report only the best six references for a low fixed
> price.
Interesting idea.
Steve Marcus
So you should take it up with the Congress. In the meantime, PTO is doing
just about the only thing that it can, short of convincing Congress to hire
another few thousand examiners, plus supporting personnel and building
another campus to house them all.
Steve Marcus
Well, your business is, and has to be, client oriented. If the client wants
to pay a bargain basement price, that's fine, provided that the client is
informed of the likely outcome, which basically is the "you get what you pay
for" theory of economics. If the client is informed that "six best
reference" searches are likely to run you up to the limit of continuing
applications plus an RCE, forcing an appeal against adequate prior art
adduced only after you amend around the next best six or so references, then
the client has nothing to blame but that other well known economic theory:
money talks and nobody walks.
If the above seems unsatisfactory (that only the well enough off - i.e.
corporate filers - can play in the patent arena), then Congress should be
lobbied and fix the insane system whereby one cannot hire counsel to
exercise professional judgement and make a choice of which references need
to be cited to PTO in order to avoid unenforceability due to so-called
inequitable conduct. If that were fixed, it would not be such a dreaded
draconian matter to file a reasonable ESD.
Steve Marcus
But merely because it is cheaper, it doesn't mean that it's the best choice
for a client who has been adequately informed of how the system works. You
just can't have it both ways: if giving in to a bad rejection leads to more
bad rejections as you shave the scope of the claims down until you run out
of the ability to filing continuing applications, what good does it do the
client if this course is cheaper than simply appealing bad rejections? Or
results in the client obtaining a patent of much less narrow scope than s/he
was entitled to, resulting in the patent being essentially worthless?
NOTA BENE: See Q & A E.6
>>>
>>> That is the kind of thing that happens in real life. It would be easy
>>> if we could just drop back to the next narrower claim, but it is
>>> rarely possible, and when possible is seldom advisable, as we are
>>> obligated to go for the broadest claim we can get.
>>>
>>> Clearly, we will never see eye to eye, but it is just as clear that
>>> the vast majority of people with a reg. no. do not agree with the PTO
>>> on the new rules. The number of adverse comments has been very high,
>>> as I'm sure you well know.
>>
>> I have no question that plenty of practitioners will feel as though PTO
>> is reaching into their pockets. In many cases, those practitioners
>> deserve to have to change the way that they do business. I have little
>> sympathy for such practitioners.
>>
>> I believe that in many cases, practitioners will have no problem at all
>> serving clients effectively and zealously under the new rules.
>>>
>>> Alun
>>
>> Steve
Steve
Alun L. Palmer
Good planning that. You only finished moving into the last one three years
ago!
Steve Marcus
> "Steve Marcus" <smarcus_...@cox.net> wrote in
> news:QJaTi.3979$E92....@newsfe23.lga:
>
>>
>> "Alun L. Palmer" <elek...@yahoo.com> wrote in message
>> news:Xns99D1591F7FFC...@216.168.3.50...
>>> "Steve Marcus" <smarcus_...@cox.net> wrote in
>>> news:j9PSi.10849$sO1....@newsfe17.lga:
>>>
>>>>
>>>> "Alun L. Palmer" <elek...@yahoo.com> wrote in message
>>>> news:Xns99D07E1C97D0...@216.168.3.50...
>>>>> "Steve Marcus" <smarcus_...@cox.net> wrote in
>>>>> news:Qn3Si.3099$KX4....@newsfe14.lga:
>>>>>
>>>>>>
>>>>>> "Alun L. Palmer" <elek...@yahoo.com> wrote in message
>>>>>> news:Xns99CDE7613936...@216.168.3.50...
>>>>>>> "Steve Marcus" <smarcus_...@cox.net> wrote in
>>>>>>> news:RawRi.2442$e37....@newsfe20.lga:
>>>>>>>
>>>>>>>>
>>>>>>>> "Emma Anne" <emma...@mac.com> wrote in message
>>>>>>>> news:1i64v9a.11mb71518rb6cnN%emma...@mac.com...
>>>>>>>>> Steve Marcus <smarcus_...@cox.net> wrote:
>>>>>>>>>
>>>>
>>>> <snip>
>>>>>
>>>>> It seems to me that the PTO is jumping the gun by creating an
>>>>> inequitable conduct problem without getting the statute fixed first.
>>>>
>>>> What makes you think that PTO hasn't been proposing this "fix," and
>>>> supporting the attempts of others to do so, long prior to this rule
>>>> package being proposed? But time waits for no man, and for no
>>>> government agency ....
>>>>
>>>> Steve
>>>>
>>>
>>> I don't doubt that, but the ESD without this reform in the law leaves
>>> all of us in a 'fix'
>>
>> So you should take it up with the Congress. In the meantime, PTO is
>> doing just about the only thing that it can, short of convincing
>> Congress to hire another few thousand examiners, plus supporting
>> personnel and building another campus to house them all.
>>
>> Steve
>
> Good planning that. You only finished moving into the last one three years
> ago!
Actually, you make an excellent point. However, it is a point in favor of
the claims & continuations rule package.
Patents is, for better or worse, a growth industry. It is impossible to
predict the rate of growth; all one can do is look at trends. But when the
rate of growth exceeds the prediction that is based on such trends, you
reach the current state of affairs.
The question then becomes:
Do you want to continue with the current state of affairs in which many
users of the system somehow require unlimited continuing application
filings, each containing unlimited numbers of claims, and the numbers of
both total filings and filings of that sort continue to climb to the point
that by the time you build facilities and staff them in order to maintain
any sort of currency in terms of when those applications will come up for
examination, the facilities and staff have become inadequate to examine the
applications in any type of timely manner? (And into the bargain, many of
the those I've been discussing matters with in this forum think that the
time for examining each application should be increased.)
Or do you want to continue to welcome everyone into the system, but place
limitations on how long they can keep the ball in the air (with
continuations that are filed only as strategic "portfolio builders"), and
there ability to make the examination of each ball unwieldly in terms of how
many claims it contains, unless they support the weight of each ball (by
submitting an ESD and by identifying substantially similar balls-something
that they are really required to do anyway per 37 CFR 1.56)?
Alun, your issues as with the c anc c rules package as a single practitioner
are dwarfed by the problems that the factory firms and the corporations have
created for the system, but in terms of patent prosecution in USPTO and in
terms of litigation (the whole inequitable conduct con game that has been
foisted on the system). I can guarantee you that the thinking and analysis
that went into the package was not directed at "how can USPTO make
examination easier for USPTO," but rather at "how can USPTO keep the system
afloat and still maintain a system based upon strong examination of patent
applications that will produce meaningful results in a realistic timeframe."
There may be other roads to go down than the c and c package; one example
might be a total modification of the system to essentially a registration
system coupled with some sort of examination when needed, thereby
eliminating the examination of disclosures which, at least in terms of when
they are filed, do not appear to have any economic potential. But the
problem with that approach is that you throw away nearly 200 years of
experience with a strong examination system, in the hopes that you can
obtain something that's both good for the country and actually workable "de
novo." I do not think that would be a logical thing to do.