by Robert J. Sayre
For years, I have been banging the drum to try to get the USPTO to better broadcast news items via email and RSS. In the 21st century, we have come to expect relevant news to be delivered to us via RSS or email rather than having to search/watch for it.
In another step forward, the USPTO has finally made available a series of email channels for free subscription. And at the USPTO Subscription Center, one can now subscribe to USPTO email announcements for any of the following:
- USPTO Press Releases: Announcements of USPTO initiatives, programs and policies—the same announcements that are provided to the media.
- USPTO Director’s Forum Blog: A weekly interactive blog by USPTO Director David Kappos discussing the latest topics of interest to the USPTO and the intellectual property community.
- USPTO Monthly Activity Reports: A monthly at-a-glance summary of new initiatives, events and significant media coverage during the previous month.
- Inventor's Eye: Inventor's Eye is for and about America’s independent and small entity inventor community. Inventor's Eye comes out every other month.
- Patents Alerts: Receive news, featured stories, event announcements, and tips for using Patents EFS-Web, e-Office Action, PDX and other e-commerce initiatives.
- Trademarks Alerts: Receive updates and announcements on upcoming Trademark system changes, events and roundtables, rules changes, and other Trademarks Operation matters.
Of course, if you are not yet subscribed, you may have missed this news, and the USPTO's timing of this announcement for the week of Christmas did not help; so I wanted to spread the word a bit more with this post (sorry I've been so busy the past few months, which has kept me from blogging). And I hope they also soon offer all of these feeds for RSS subscription, though I have seen no word on that yet, except for the feed for the Director's blog.
Also check out the USPTO on Twitter and Facebook. Staying on top of USPTO initiatives and rule changes is one of the best ways to maximize one's prospects for obtaining an allowance. These new tools make it easier than ever to do so.
Here is the announcement regarding these feeds from the Director's blog.
by Robert J. Sayre
Earlier this week, USPTO Director David Kappos unveiled a proposed new count system for measuring examiner production. This news may sound like esoteric trivia if you are not a patent practitioner; though, in fact, it represents a very important development for the improvement and healthy functioning of the US patent system.
Allow me to first step back and provide some context. First-time patent applicants are often surprised to when I tell them that we can expect a likely rejection of their patent application when the examiner issues a first Office Action. The reasons for this phenomenon are addressed below.
First, examiners at the United States Patent and Trademark Office are given very little time to issue Actions on what are often very complex and detailed patent applications. As technology grows more complex, so do many patent applications; and, therefore, more time should be allotted for examination.
Additionally, Examiner production at the USPTO is measured in "counts." Examiners have historically received one count for a first Action on the merits and one count for an allowance or abandonment. Accordingly, if the examiner issues a first-Action allowance, the examiner receives one count. If, however, the examiner issues a first-Action rejection, allows the applicant to respond, and then allows the application, the examiner receives two counts.
Please do not misinterpret me, however. I am not suggesting that examiners are by-and-large unscrupulous or lack integrity--not at all. I do occasionally receive first-Action allowances even where issuing that allowance may run contrary to the examiner's self interest in terms of receiving counts, and I find that most of the examiners at the USPTO with whom I interact take their jobs very seriously and have high integrity. Nevertheless, I think most psychologists/sociologists will tell you that this incentive system is likely to skew results, at least in close cases, no matter how fair-minded the participants may attempt to be.
Director Kappos earlier pledged to dramatically change the count system to provide better, fairer incentives for expeditiously reaching determinations of patentability. Kappos previously referred to "disfunctional behavior" in the examination of US patent applications, and the USPTO presentation introducing this proposed new count system cites as an expected result of these changes a reduction of "examiner reluctance to allow patent applications" (slide 3 of the above-linked presentation). Another expected benefit of these changes is to "increase examiner morale leading to reduced attrition" (slide 5--high examiner turnover is currently one of the biggest problems at the USPTO).
Although this initial proposal may ultimately be subject to revision, I give Kappos and his task force high marks in crafting a proposal that appears likely to noticeably advance the goals of promoting efficiency and fairness in patent examination; and I applaud their transparency and openness in presenting this proposal to the public, which is a marked change from the practices of the previous administration.
Important elements of the proposed new count system include the following (with my comments in parentheses):
- allotting the examiner more time to issue a First Action on the Merits (if you value efficient, cost-effective patent prosecution, moving toward a more in-depth, carefully considered evaluation of patentability issues right from the start is welcome news),
- crediting examiners with time to conduct examiner-initiated interviews (I have already posted my views as to how interviews with patent examiners can dramatically advance the resolution of issues during examination; if examiners are likewise encouraged to reach out to attorneys when they confront an issue that may more readily be resolved via an interview, these advantages and efficiencies can be further increased and expanded beyond situations where the attorney initiates the interview), and
- reducing the credit that examiners receive for later Actions in drawn-out examinations. including reduced credit for the filing of Requests for Continued Examination (again good news for applicants wishing for a more expeditious resolution of patentability issues).
The USPTO presentation (slide 6) also includes a couple of tables (reproduced below) comparing the current count system with the proposed new examiner count system:
Current count system:
Proposed new count system:
The columns in the above tables represent (a) First Action on the Merits (FAOM), (b) Final Action, and (c) Allowance/Abandonment of the application for an original application and for further examination after filing a first and second Request for Continued Examination (RCE).
Further still, the presentation (slide 19) suggests that examiners would also face reduced risks of penalty (oral warnings) if an indication of patentability is found to be in error. This proposal also is good news for applicants, as a fear of reprimand on behalf of examiners if a questionable case is issued is believed to be a cause for the drastic drop in the patent allowance rate at the USPTO.
I expect these proposals will be subject to at least minor tweaks as interested stakeholders (including the examining corps) offer their input. Meanwhile, recognizing that a lot of the traffic to this blog comes from the USPTO (though I never know anything more specific than the source domain--I do not know which examiners may visit this site), I welcome any comments from examiners as to how they view this proposed new count system.
As always, I would be delighted if you would subscribe to the RSS feed (top of page) or email list (right column) for this blog to receive future posts (there is much more to come); the bigger my audience, the more inspired I am to write. Thanks for visiting.
by Robert J. Sayre
Several recent posts on this patent blog have explored coming changes to the USPTO. This post, in part, looks back. The Patent Claims and Continuation Rules promulgated by the previous administration (limiting an applicant's right to file multiple patent applications with an adequate number of claims) was one of the most contentious USPTO initiatives under past-Director Jon Dudas. It's retrospective nature, in particular, sent many applicants into a frenzy to try to preserve as much of their then-endangered intellectual property rights as possible.
Yesterday (Friday, September 25, 2009), I had a chance to hear from and question past-Director Dudas at a forum at Suffolk Law School in Boston. To his credit, Jon Dudas made himself available and invited challenging and critical questions. Not wanting to miss the opportunity, I took him up on that invitation.
USPTO Claims and Continuations Rules Package:
But first, one of Dudas's most interesting comments pertained to the above-mentioned Continuation Rules. As you may recall, those Rules were challenged before implementation and, in a ruling that had the patent bar collectively on the edge of its seat, Federal District Court Judge James Cacheris ruled that the USPTO's proposed limitations to the number of continuation applications and claims per patent were improper extensions of PTO authority and, accordingly, struck down the Rules.
As the celebration ebbed, a three-judge panel of the Court of Appeals for the Federal Circuit surprisingly overtured the District Court Decision on March 20, 2009, holding only a limited portion of the Rules relating to continuation applications to be contrary to the Patent Act. Adding to the tumult, the full bench at the Court of Appeals for the Federal Circuit then vacated this panel decision and agreed to rehear the case en banc (i.e., with all 16 judges hearing the case).
Meanwhile, of course, the Bush administration was replaced by the Obama administration, and Director Dudas resigned on January 18, 2009; so implementation of the Rules package, if it ultimately survives the appeal process, would be left to the next Director. Current-Director David Kappos was not sworn in until this past month; so in a sense, the Continuation Rules ship has been sailing through the appeal process without a captain since the beginning of the year. My understanding is that new-Director Kappos is now unable to comment on the continuation rules given that he is now a party to the litigation, though I understand that he was against the rules when he previously served as counsel to IBM.
Accordingly, the fate of the Continuation Rules package has remained somewhat uncertain. Though, I was surprised to hear past-Director Dudas now concede on Friday, in his words, "I don't think there's a way in the world that the Rules package will go forward." Dudas further explained that he believed that if a new USPTO Director had been confirmed before the Court of Appeals for the Federal Circuit granted review, the Rules package would have been withdrawn. Past-Director Dudas would seem to be in a position to know, so it appears safe to say that even if the full panel at the Federal Circuit approves some or all of the rules, the claims-continuation rule package will never be implemented, at least not in its current form.
Drop in US Patent Allowance Rate:
Getting back to my questioning of past-Director Dudas, I asked him for his view as to what policies and initiatives led to the drastic plunge in patent allowance rates at the USPTO under his leadership. Dudas surprised me by telling me that he was surprised at the degree to which the allowance rate dropped. As to why the rate dropped so far and so fast, Dudas first indicated that he believed that the "second pair of eyes" review procedure of examiner Actions was implemented in overly onerous way at the USPTO.
Dudas also noted (correctly, I believe) that the focus on error rate (which seems primarily aimed toward ensuring that no questionable patents are issued) may have drove down allowance rates, just as the "quality is customer [applicant] satisfaction" mindset of the USPTO under the leadership of Commissioner Bruce Lehman in the mid-1990's corresponded with a rise in allowance rates. Dudas further indicated that he thought the Supreme Court's KSR decision, which raised the bar for establishing non-obviousness of an invention, drove the allowance rate down even further.
When Dudas was introduced, emphasis was placed on his achievements promoting intellectual property protection overseas; and Dudas's speech focused primarily on congressional patent reform efforts (Dudas was Senate Counsel before he was not nominated by Bush to lead the USPTO); and he seemed to have a stronger interest in the actions of the legislative branch (i.e., House and Senate) than on the executive branch (which is where the USPTO resides). Combined with his comments on how the USPTO functioned (including his indications of surprise), it appeared to me that Dudas may not have been primarily focused on directing the fine points of policy and the particulars of USPTO examination practice when he was Director. Note, however, that this was the first time that I had met Dudas, so my observation basis is limited.
If not Dudas, who drove these policies? I am not sure. Regardless, new-Director Kappos has indicated that he intends to focus more on US patent examination policy and less on foreign initiatives, except to the extent that foreign cooperation can help to make US patent examination more efficient.
As for what happens next, past-Director Dudas indicated that he expected that, within the next year, the growing list of bilateral patent-prosecution-highway agreements between the US and foreign countries (aimed to streamline prosecution based on allowance of a corresponding application in another country) would grow into a common multi-lateral agreement among patenting bodies worldwide. He also expected fee increases for applicants and more time for examiners to conduct their examinations.
by Robert J. Sayre
Hat tip to Peter Zura at the 271 blog for the practice-tip reminder that you must now replace all claims when making amendments in PCT applications (not just the pages on which amendments are made). Peter points to the USPTO Notice on his blog, though take note that the USPTO is merely implementing a change in the PCT Rules (specifically Rule 66.8), effective July 1.
Accordingly, practitioners should recognize that this is a PCT Rule (not just US), so likewise take note if you selected another office (such as the European Patent Office, the Korean IP Office, or IP Australia) for search and examination to prevent your claim amendments from being bounced.