Feb 1, 2023, is the new deadline for providing comments to the USPTO on this RFC.
Topics: The USPTO invites written responses to the following questions and requests. Commenters are welcome to respond to any or all of the questions.
1. Identify any specific sources of prior art not currently available through the Patents End-to-End Search system that you believe examiners should be searching. How should the USPTO facilitate an applicant’s submission of prior art that is not accessible in the Patents End-to-End Search system ( e.g., “on sale” or prior public use)?
2. How, if at all, should the USPTO change claim support and/or continuation practice to achieve the aims of fostering innovation, competition, and access to information through robust and reliable patents? Specifically, should the USPTO:
a. require applicants to explain or identify the corresponding support in the written description for each claim, or claim limitation, upon the original presentation of the claim(s), and/or upon any subsequent amendment to the claim(s) (including requiring a showing of express or inherent support in the written description for negative claim limitations)?
b. require applicants to explain or identify the corresponding support for each claim, or claim limitation, in the written description of every prior-filed application for which the benefit of an earlier filing date is sought, under, e.g.,35 U.S.C. 119, 120, 121, or 365?
c. require applicants to explain or identify the corresponding support for each claim, or claim limitation, in the written description of every prior-filed application for which the benefit of an earlier filing date is sought, under, e.g.,35 U.S.C. 119, 120, 121, or 365 (including requiring such support whenever a benefit or priority claim is presented, including upon the filing of a petition for a delayed benefit or priority claim and upon the filing of a request for a certificate of correction to add a benefit or priority claim)?
d. make clear that claims must find clear support and antecedent basis in the written description by replacing the “or” in 37 CFR 1.75(d)(1) with an “and” as follows: “The claim or claims must conform to the invention as set forth in the remainder of the specification, and the terms and phrases used in the claims must find clear support or and antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description?”
e. require applicants to provide detailed analysis showing support for genus or Markush claims, and require applicants to identify each claim limitation that is a genus, and explain or identify the corresponding support in the written description for each species encompassed in the claimed genus?
f. require applicants to describe what subject matter is new in continuing applications ( e.g., continuation, continuation-in-part, and divisional applications) to explain or identify subject matter that has been added, deleted, or changed in the disclosure of the application, as compared to the parent application(s)?
3. How, if at all, should the USPTO change RCE practice to achieve the aims of fostering innovation, competition, and access to information through robust and reliable patents? Specifically, should the USPTO implement internal process changes once the number of RCEs filed in an application reaches a certain threshold, such as transferring the application to a new examiner or increasing the scrutiny given in the examination of the application?
4. How, if at all, should the USPTO limit or change restriction, divisional, rejoinder, and/or non-statutory double patenting practice to achieve the aims of fostering innovation, competition, and access to information through robust and reliable patents? Specifically, should the USPTO:
a. allow for the examination of two or more distinct inventions in the same proceeding in a manner similar to the practice authorized by 37 CFR 1.129(b), and, if so, consider an offset to patent term adjustment in such cases?
b. revise the burden requirement before the examiner to impose a restriction, and if so, how?
c. adjust the method by which an examiner appropriately establishes burden for imposing a restriction requirement?
d. authorize applicants, in the case of a Markush group, to suggest how the scope of the claim searched should be expanded if the elected species is not found in an effort to present closely related inventions for consideration together?
e. adopt a unity of invention requirement in place of the restriction requirement?
f. revise the current practice of authorizing the filing of divisional applications in a series to require all divisional applications to be filed within a set period of time after the restriction requirement is made final and after any petition for review has been resolved?
g. make changes to the rejoinder practice after a final rejection has been made, such as giving applicants a certain time period after final rejection to provide appropriate claims for rejoinder?
h. limit or change non-statutory double patenting practice, including requiring applicants seeking patents on obvious variations to prior claims to stipulate that the claims are not patentably distinct from the previously considered claims as a condition of filing a terminal disclaimer to obviate the rejection; rejecting such claims as not differing substantially from each other or as unduly multiplied under 37 CFR 1.75; and/or requiring a common applicant or assignee to include all patentably indistinct claims in a single application or to explain a good and sufficient reason for retaining patentably indistinct claims in two or more applications? See 37 CFR 1.78(f).
5. Please provide any other input on any of the proposals listed under initiatives 2(a)-2(i) of the USPTO Letter, or any other suggestions to achieve the aims of fostering innovation, competition, and access to information through robust and reliable patents.
The USPTO also invites public input on the following questions, which are presented verbatim (except for minor changes to internal citation format) as they appeared in the June 8 letter from Members of Congress. Any comments relating to fee setting will be taken into consideration when the USPTO takes up fee setting more broadly.
6. Terminal disclaimers, allowed under 37 CFR 1.321(d), allow applicants to receive patents that are obvious variations of each other as long as the expiration dates match. How would eliminating terminal disclaimers, thus prohibiting patents that are obvious variations of each other, affect patent prosecution strategies and patent quality overall?
7. Currently, patents tied together with a terminal disclaimer after an obviousness-type double patent rejection must be separately challenged on validity grounds. However, if these patents are obvious variations of each other, should the filing of a terminal disclaimer be an admission of obviousness? And if so, would these patents, when their validity is challenged after issuance, stand and fall together?
8. Should the USPTO require a second look, by a team of patent quality specialists, before issuing a continuation patent on a first office action, with special emphasis on whether the claims satisfy the written description, enablement, and definiteness requirements of 35 U.S.C. 112, and whether the claims do not cover the same invention as a related application?
9. Should there be heightened examination requirements for continuation patents, to ensure that minor modifications do not receive second or subsequent patents?
10. The Patent Act requires the USPTO Director to set a “time during the pendency of the [original] application” in which continuation status may be filed. Currently there is no time limit relative to the original application. Can the USPTO implement a rule change that requires any continuation application to be filed within a set timeframe of the ultimate parent application? What is the appropriate timeframe after the applicant files an application before the applicant should know what types of inventions the patent will actually cover? Would a benchmark ( e.g., within six months of the first office action on the earliest application in a family) be preferable to a specific deadline ( e.g., one year after the earliest application in a family)?
11. The USPTO has fee-setting authority and has set [fees] for filing, search, and examination of applications below the actual costs of carrying out these activities, while maintenance fees for issued patents are above the actual cost. If the up-front fees reflected the actual cost of obtaining a patent, would this increase patent quality by discouraging filing of patents unlikely to succeed? Similarly, if fees for continuation applications were increased above the initial filing fees, would examination be more thorough and would applicants be less likely to use continuations to cover, for example, inventions that are obvious variations of each other?
Why are many of my comments still awaiting moderation?
You may have hit one of several known filters:
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Sometimes (but alas, not often) posts that are caught in a filter may be released.
Comment on who is the “public” in @Anon Jan 25’s question which I quote :
“Ben’s emphasis on “the public” is interesting in that it can be taken to be more of a “stakeholders” call than your typical parties involved in the Quid Pro Quo (the applicant and the Patent Office).
If one permits Ben’s “context,” then one (rightfully) wonders who else may make up this “public” and why are they being inserted into the Quid Pro Quo.”
The “public” is the general public. The quid pro quo of the patent system is that an inventor can be awarded an exclusive right in return for the publication of the patent or application. The benefit to the public is the dissemination of technical information. This is one of the reasons for the enabling disclosure requirement.
Sorry but no – the Office already represents the general public.
This is a call to someone other than that.
“ This is a call to someone other than that.”
Your mother, maybe? Seriously, get some help already.
You are projecting again.
(feel free to actually make a counter point)
Also, it is an error (a simple mistake) to think that the quid pro quo is the exchange of technical knowledge, as patents are legal (rather than strictly technical) documents, and the grant sets out the ability to share more than what is merely within the patent document directly.
Certainly “enabling” has the color that you mention, but remember that exactitude is NOT required (that ‘without undo experimentation’ thing).
What are you talking about?! It’s not even required that ‘inventions’ WORK as claimed! That went out over 100 years ago! They don’t have to work at all anymore (just look like they ‘might’). People are still getting patents on perpetual motion machines, ‘warp drives’ and all kinds of other ‘nonsense’. This should be very embarrassing to the PTO (but they don’t seem to care). Don’t think these kinds of patents make it through foreign patent offices. Just pathetic!
Do you have an example (actual number) of one these perpetual motion machines or warp drives? (It’s not that I don’t believe you, but it would be cool to have this exception (exceptional?) example at the ready.
“ patents are legal (rather than strictly technical) documents”
And buttons are fasteners (rather than strictly round documents).
Patent huffers = worse “attorneys” ever.
I see that several of the older comment threads have had late ‘releases’ out of the buffer…
As to Malcolm’s whine and misplaced attempted se X ual insult (does he not remember many of his posts expunged for such?), please feel free to actually challenge the point.
You do not because you can not.
Except now most patent applications get published whether or not you ever get a patent! That’s NOT how the ‘social contract’ is supposed to work. The Drafters of the Constitution never implied that’s how it was supposed to work (i.e. you disclose, whether or not we grant you a patent . . . sucker!).
It’s your right not to like it, but the USPTO does not work in isolation. It operates within a worldwide system including the PCT which relies heavily on published patent applications for prior art search. Easy, free and efficient access to this wealth of technical information contained in the databases of patent offices is a tremendous benefit for everybody, including US citizens and organizations.
In addition, the USPTO relies a lot on the searches carried out by other patent offices, esp. for PCT applications and due to the US duty of disclosure requiring foreign applicants to disclose prior art cited by foreign patent offices.
Why we no longer file in PCT! Our applications are ‘kept secret’, ‘unpublished’ & therefore ‘trade secrets’ UNTIL and UNLESS we get an actual ‘good’ and ‘enforceable’ patent in the U.S. (not a piece of ‘legal garbage’ costing > $20K)! That’s how it should work and HAD worked for > 200 years in the U.S.!
Screw the PCT and European patent law (which is useless)! We once had the best system for IP protection in the world (which created the industrial revolution), now we don’t.
Inventors will soon become extinct because it’s just an unsustainable and ridiculously expensive ‘hobby’ now, not a profession (might as well buy a sail boat)! That’s not what being an inventor used to be in America. Inventors get no respect or compensation now! It’s all just a scam and waste of LOTS of money for inventors (only patent lawyers get rich now)!
The system is now corrupt and ‘rigged’ in favor of large corporations and monopolies (who PAID FOR the AIA and ‘harmonization’) and you know it! The independent inventor doesn’t stand a chance anymore (and hasn’t for at least 30 years). We don’t disclose unless we get a good & enforceable patent – period (but we keep our applications ‘active’ until then)! So ‘at least’ we get perpetual ‘patent pending’ (while keeping our inventions secret) until we get something we can accept. If that takes 20 years . . . so be it! Our inventions then become like fine wine in a wine cellar, rather than corporations (and society) getting them for free! We don’t ‘work’ and ‘create’ for FREE! I’d rather see my inventions burn! Inventors should just go on strike, then we’ll see how things go!
Sadly, francis’ reply reflects a lack of appreciation for the Quid Pro Quo that is at root of your comment, George.
His “rest of world” is also — at heart — simply NOT correct, as patent law is Sovereign Centric law (even with international treaties – and corresponding US implementation law by Congress).
Further still, if one is NOT engaging in any “rest of world” Sovereigns, the path of a Non-publication request is available (and is vastly under-utilized).
This path preserves the US Quid Pro Quo of the exchange of a basket of personal property rights in exchange for Publication — in direct contrast to other Sovereigns’ choice of a chance for patents rights in exchange for publication.
One very much still controls that choice, and it comes down to whether or not one is willing to accept the Quid Pro Quo of Foreign Sovereigns. If one is willing to do that, then one relinquishes the (better) Quid Pro Quo of the US Sovereign.
Exactly! Only way to go now, until patents gain back the value and ‘meaning’ (i.e. ‘breadth’) they used to have 100+ years ago! It’s all just a ‘racket’ for lawyers and a ‘all you can steal’ buffet for big corporations and monopolies who can steal and use anything they want now! The American inventor has to fight back now, by using trade secrets, PERPETUAL ‘patent pending’ notices, rapid market penetration and trademarks much more (if and when possible). If you can’t commercialize and market it ‘yourself’, don’t bother with a patent! They are useless and worthless for independent inventors now. An independent inventor can no longer afford to enforce even one patent, much less a dozen! So what’s the point of the whole IP system now? There is none. It doesn’t work anymore (at least to the benefit of the inventor). An artist in the street can make more than an inventor now!
Interesting. At 10.2.2.1.1 John says that most EPO objections would stand, also in the USPTO and that of the Big Five Patent Offices, four issue similar objections but the other one (the USPTO) is out of line with the other four. In reply, Ben, from inside the USPTO says that these objections formulated outside the USA are not “defensible” under US law.
Is that right, I wonder. If it is, it might be because all the other of the Big Five Offices operate under civil law, with the tribunal deemed to have the knowledge of the person skilled in the art.
In that case then, harmony between USA and ROW, in the enquiry into patentability is a chimera, impossible to achieve.
You missed a “not” in your first sentence (as Ben’s response appears to strengthen John’s comment); but then you jump to wearing your EPO Uber Alles spectacles again and insert non-sequitors.
Why would anyone expect “harmony” when it is fully known that the different Sovereigns have chosen differently on a number of wrinkles?
As noted in my comment, my statement is specific to certain areas of prosecution. The EPO rejections I see typically dismiss portions of the claim outright (based on Article 52, I believe), and the treatment of the remaining limitations is both incomplete under US law and unhelpful because the novel feature is typically part of the material that was dismissed. So I don’t think this particular difference is rooted in common vs civil law.
OK. Makes sense.
The rejections from common law jurisdictions (AU & CA) tend to be essentially the same as from civil law jurisdictions (EP & JP). I really do not see a common law vs civil law split. I see a USPTO vs every other patent office split.
OK. I am persuaded.
Examiner bros, is it the case internally that cases which are on patent prosecution highway or Track 1 (special) cases get put on the “expedited” tab when the first normal amendment comes in (not a after final amendment but a normal pre-final action amendment)? Did this change recently? I thought they got put on the normal amendment tab when normal amendments came in during those “special” cases? This is some sht, it makes you have to work on that whole amendment super fast.
Examiners don’t need new sources of prior art….they need to interpret the prior art they already have correctly, and have properly determined that the reference in front of them is actually prior art in view of the earliest filing date the application is claiming priority to.
Question: is a claim deemed always to be entitled to the earliest declared priority date, regardless where in the world that priority filing date was created.
Or is it for Applicant to demonstrate that the claim is entitled to a filing date in, say, Korea, one year earlier than Applicant’s first USPTO filing date?
I ask because I assume that Examiners ought to cite as prior art, ab initio, anything with a publication date earlier than Applicant’s earliest US filing date, and that it is Applicant’s burden to show in response that the claim is entitled to the foreign “priority” date.
Or with a c-i-p, are all claims assumed, ab initio, to be entitled to the parent filing date, or the c-i-p filing date?
Which section of the Patent Statute requires that patents be robust and reliable?
Sounds like they are describing a coffee (robust) and public transportation (reliable). What they really mean is easy to get around.
You have to give it to the dems, their euphemism game is strong.
+1
It’s in the Constitution bruh. “securing”.
“Securing for limited times” is in the Constitution. Robust and reliable is not. What did it mean at the time of drafting. One meaning today is “protect against threats; make safe.”
The exclusive right is protected. The Constitution does not put qualifiers on the protection.
Note as well what is being “made safe,” or secured: the exclusive right (a negative right which is not the same as a “right to make.”
Those understanding innovation — especially improvement innovation should readily recognize why (one can innovate over and above existing rights of others, to which the innovator does not have a right to make the base item from which the innovation stems from
I would point out again that I often get the same claims allowed in EP, CN, KR, JP, and the USA.
So, where is the quality problem?
The biggest way to improve quality is to go back to TSM and perform an extended search like for the EP + PCT. Do a search of that quality and go back to TSM and quality will soar.
So, the narrative that the USA has these horrible claims and horrible patent quality just doesn’t stand up to scrutiny.
How many of your patents are ‘enforceable’ against anyone, especially the rich and powerful? They’re NOT, are they? None of your great ideas are worth anything, are they? Have you ever filed an infringement suit against a large entity? Probably not b/c you don’t have the money to do that. Have millions to spend doing that? You’re all hat & no cattle!
“ None of your great ideas are worth anything, are they? ”
This comment was worth the laughter so you do the math. [preserved for eternity]
George, what are you talking about? These aren’t “my ideas” but my clients.
And yes, some of patents have been enforced/litigated. Others have been licensed to large corporations. Other of my patents have been sold to other companies for millions of dollars.
Etc.
“These aren’t “my ideas” but my clients.”
“Other of my patents have been sold to other companies for millions of dollars.”
LOL!!!
Patent quality? The FR notices actually seem quite unconcerned about patent quality. The impetus here is, in the PTO’s words, to “execute on the President’s drug pricing agenda,” not to address any particular problem with patent quality.
Yep.
Good point. It is distressing how thoroughly this administration appears to have convinced itself that tinkering with patent law is the key to bringing down prescription drug prices. Like a drunk searching for his keys under the lamppost because that is where the light is better…
“Like a drunk searching for his keys under the lamppost”
B-b-b-but what about the d-d-d-deficit?
^^^ the epitome of a strawman, given that no one here has mentioned any notion of the political point of the deficit.
Maybe you and sarah can hang out together…
Actually I often now get what I consider to be reasonable claims allowed in EP and JP (based on the prior art and evidence in the application), while the US examiner rejects even very narrow claims for lack of written description and enablement. Maybe biotech/pharma is different than your area, but this has happened now in most of the recent cases I’ve seen. Incidentally, the JPO is strikingly better in my experience at finding art; maybe the USPTO should talk to the JPO about how they do their searches at least in biotech/pharma.
I agree with all of this, especially the part about JPO finding better art than the USPTO finds. I sometimes wonder if US patent quality would not be improved by simply requiring US applicants to get clearance from one of EPO, JPO, or KIPO and then granting the corresponding claim scope in the USPTO (a sort of PPH on steroids scheme).
“Like a drunk searching for his keys under the lamppost”
Tell us more, Greg.
>>>6. Terminal disclaimers, allowed under 37 CFR 1.321(d), allow applicants to receive patents that are obvious variations of each other as long as the expiration dates match. How would eliminating terminal disclaimers, thus prohibiting patents that are obvious variations of each other, affect patent prosecution strategies and patent quality overall?
This again would be horrible. Variants of the claims are needed because the claims may contain elements that are not by some devices.
Notice that all these items (almost all) put more burden on the applicant. So, this giant federal agency’s solution to improving their quality of examination is to shift the burden to the applicant.
I figured that this Democratic Director would come up with some horrible plan like this.
This is atrocious. Looks like Joe Matal is writing regulations again.
>>>1. Identify any specific sources of prior art not currently available through the Patents End-to-End Search system that you believe examiners should be searching. How should the USPTO facilitate an applicant’s submission of prior art that is not accessible in the Patents End-to-End Search system ( e.g., “on sale” or prior public use)?
This is so anti-patent. It is an attempt to shift the burden of finding prior art to the applicant rather than the USPTO. The PTO is supposed to be staffed with experts in areas of innovation. They are supposed to be the ones to find prior art. The applicant is not.
I don’t necessarily disagree with you, but there have been times in my career where it certainly seemed like the USPTO was missing some bodies of art that may have avoided larger downstream issues. I think that it’s also fair to recognize that there are sometimes fields or pockets of products that haven’t been particularly art heavy, and the risk of pulling stuff out of the public domain is non-trivial.
As one example, I was involved as the junior grunt litigator on a case early in my career that involved a patent covering a relatively simple piece of exercise equipment. The universe of patents/published applications was pretty thin, but we lucked into some photos in an old magazine and some tradeshow pamphlets that predated the patent at issue by maybe a decade.
I’d also suggest that a lot of the public debate and legal fights around business methods (including a lot of those that wound up taking on a subject matter eligibility bent) could have been short circuited by obviousness rejections that involved art from business case studies or other business school texts. Certainly a lot of the claims and applications I saw in the mid-late 2000’s that were little more than “existing process, but now on a computer” would have been resolved more efficiently.
I think it’s an open question whether a more robust evaluation of repositories of open source code would add clarity to the scope of claims in situations I see now where there isn’t a consistent nomenclature for the structure or operation of the software baked into the claim.
The applicant already has a duty to disclose known references.
The extra work on the prior art searches must fall on the USTPO. They must be the experts in the different areas. The applicants simply can’t do it for any reasonable cost.
Plus, it is simply not feasible to have the applicant have a prior art responsibility. How would that ever be policed? How would that play out in litigation? Just a nightmare.
I think I’m reading this particular prompt differently than you may be – I read it as “hey, are there are any buckets of art out there that the USPTO doesn’t currently use/have familiarity and expertise with that that it should use/access/be familiar with and expert in”.
As to the second part of the prompt, with facilitating submission of art by the applicant around public use/on-sale issued (presumably known to the applicant – I don’t read that as asking to impose a new burden, but rather a recognition that there are situations where a clear, sufficient mechanism to deal with disclosure obligations while differentiating between the aspects of an evolving product that are barred and those that aren’t would be nice.
I agree with you that burden shifting to the applicant beyond the existing duties is problematic for a host of reasons, but this particular request strikes me as not that.
Beyond the existing duties… not that.
Do you realize that “asking again for anything already existing to be done is a bit nonsensical?
You have to be kidding me. Create a duty on the applicant to identify “sources of prior art” that are not in “Patents End-to-End Search system”.
So, an applicant has to figure out the USPTO’s search system and identify “sources of prior art” that are relevant to a prior art search for their patent application.
This creates a new burden and that is a nightmare for claim validity. A new validity challenge in court: you should have known that a conferences in Russia was relevant to your patent application and that the “Patents End-to-End Search system” did not cover those conferences.
Let’s be clear here. The USPTO is a huge government agency that should be competent to perform prior art searches. There is a special case where the applicant may know specifically of references that they should disclose. But the USPTO needs to be responsible for their own search engine.
You have to be kidding me. Create a duty on the applicant to identify “sources of prior art” that are not in “Patents End-to-End Search system”.
So, an applicant has to figure out the USPTO’s search system and identify “sources of prior art” that are relevant to a prior art search for their patent application.
You must be on some drug to think that isn’t a new burden and that it doesn’t create a nightmare for claim validity. A new validity challenge in court: you should have known that a conferences in Russia was relevant to your patent application and that the “Patents End-to-End Search system” did not cover those conferences.
Let’s be clear here. The USPTO is a huge government agency that should be competent to perform prior art searches. There is a special case where the applicant may know specifically of references that they should disclose. But the USPTO needs to be responsible for their own search engine.
Just a ridiculous comment.
The issue is whether a new duty should be imposed for an application to ensure that the PTO’s search engine is aware of different areas of prior art that might be relevant to the application…
“I read it as “hey, are there are any buckets of art out there that the USPTO doesn’t currently use/have familiarity and expertise with that that it should use/access/be familiar with and expert in”.”
Your read is absolutely correct. It’s not tied to any application, and it specifically asks where else examiners should be looking.
Isn’t it depressing how someone could have such poor reading comprehension, and yet be gainfully employed in your field?
Just misrepresent everything as usual.
It’s clear that you have at least a middle school level of reading comprehension, so perhaps some hand holding will help you across the finish line.
The Federal Register questions are proceeded with contextual information including:
A. Prior Art Searching
The USPTO Letter, section 2(b), indicates the USPTO “is exploring additional technology and resources of prior art.” Patent examiners have access to many resources for searching for prior art during the examination of patent applications. The new Patents End-to-End Search system includes access to U.S. patents and pre-grant publications and more than 76 million foreign patent documents with high-quality English translations and new, improved search capabilities. In addition, examiners search general and technology-specific databases for non-patent prior art and are provided the services of trained professional online search personnel for non-patent prior art searching. See Manual of Patent Examining Procedure (MPEP) 904. In question 1 below, the USPTO seeks public input on specific sources of prior art to ensure that patent examiners have access to the most relevant information. Specifically, the USPTO seeks public input on robust sources of technology-specific, non-patent literature. The USPTO also seeks public input on best practices to ensure that examiners are aware of public use and on-sale activity that is relevant to examination.
They’re asking for sources of prior art from the public. And nothing suggests that there’s any duty because of course there’s no obligation when they’re just asking for comments from the oublic about where the PTO should look for prior art.
I suspect that should be clear enough for you, but feel free to prove that your reading comprehension is even lower than I already believe it is.
My comments stand. Re-read them and stop misrepresenting what I’ve said. And anyone with any experience dealing Administrative Law knows that (1) must have been put there with an eye to adding some duty on the applicant’s part otherwise it is merely a request that could be made anytime and does not require any comments or any further procedural steps.
Ben’s emphasis on “the public” is interesting in that it can be taken to be more of a “stakeholders” call than your typical parties involved in the Quid Pro Quo (the applicant and the Patent Office).
If one permits Ben’s “context,” then one (rightfully) wonders who else may make up this “public” and why are they being inserted into the Quid Pro Quo.
It does not take much “reading between the lines” to surmise that this is a way to give some power to the Efficient Infringers as part of that other ‘public.’
“otherwise it is merely a request that could be made anytime and does not require any comments”
It is merely a request! The point of the comments is, drum-roll please, to transmit the information requested from the public to the PTO!
Look, this is obviously going no-where, so I’m out.
But please, if the PTO rolls out a program requiring applicants to identify prior art sources using this FR entry as the Notice of Proposed Rule making, remind me of this exchange, and I will withdraw my disparagement of your reading comprehension, admit that you were right, and acknowledge that I’ll never be as wise as the great NWPA.
You should be happy to show anything relevant, especially anything that’s very similar to what you’ve already done. It’s not a shell game or hide & seek. If you manage to hide something from an examiner, it means your patent will be worthless later, if someone finds what you intentionally hid. All that time & money just wasted on an invalid patent. A patent is only good & ‘strong’ if NO ONE can ‘ever’ find anything similar. Not worth filing for anything else (that’s already been invented (or described before)! That’s YOUR job, so you don’t waste your time & money getting a ‘legally worthless’ patent. I always provide whatever I can find. Besides examiners hate to use anything YOU give them!!! So always give them the best and closest references you can! They will likely just ignore those and try to find their own (which will be less relevant).
Just a ridiculous comment.
The issue is whether a new duty should be imposed for an application to ensure that the PTO’s search engine is aware of different areas of prior art that might be relevant to the application.
Besides examiners hate to use anything YOU give them!!! So always give them the best and closest references you can! They will likely just ignore those and try to find their own (which will be less relevant).
This is distressingly true in my experience.
I don’t think that it’s about hating to use applicant provided references but rather simply reading them differently.
A cursory review of a reference by two patent professionals will very frequently result in two very different opinions. I was recently working with another examiner, and the reference he favored looked like trash to me, and the reference I favored looked like trash to him.
Of course a conversation about the references will hopefully cause the opinions to converge, but one never has a conversation through an IDS sheet.
My experience is the same as Dozens’. I have just a few quick thoughts in response to your reply.
(1) The USPTO has lots of examiners, and those examiners examine a lot of cases. I am sure that the explanation that you offer is true for some of them.
(2) Notwithstanding #1 above, I have several times submitted 3rd party art in both this country and others. When you submit a 3rd party IDS, you submit a claim chart explaining the relevance of the submitted art to the claims. This is, obviously, unlike the usual IDS. I have never made a 3rd party submission that was not a dead-on anticipation, but I have also never seen an examiner make a 102 based on my 3rd party IDS, even though the claim chart is 90% of the rejection already written up. This bespeaks something more than just a different first-glance response to the art.
(3) When I make my own IDS submissions to introduce art cited in foreign jurisdictions, I also submit the office action (and translation, where relevant) at the same time as the art. Once again, then, there is an explanation of the relevance of the art, not just an IDS sheet. Only once in my career have a I seen a US examiner adopt the logic of a rejection from a foreign office. I can appreciate that sometimes, the foreign law is different from US law, so that the rejection would not make sense in the US context, but most of those rejections that I have seen from EP and JP would make as much sense under US law. The fact that only once have I seen a US examiner apply the foreign examiner’s reasoning in the US context suggests to me that more is going on than just “[a] cursory review of a reference by two patent professionals… result[ing] in two very different opinions.” This seems more consistent with an active aversion among US examiners to apply art that they did not turn up themselves.
(4) Finally, it is worth noting that the US is kind of unique in this respect. The rejections that I get from the EPO for a given application usually look much like those from the JPO, which look much like those from KIPO, which look much like those from the MX-INPI (etc). It is only the US which tends to stand out in a given patent family.
“I have also never seen an examiner make a 102 based on my 3rd party IDS, even though the claim chart is 90% of the rejection already written up.”
I find that sincerely baffling. I’ve never received a third party submission, and I can’t imagine why someone wouldn’t use it if I found it persuasive.
“but most of those rejections that I have seen from EP and JP would make as much sense under US law.”
This definitely depends on your prosecution area. The vast majority of EPO rejections in my area are not defensible under US law. And I generally cannot follow JPO rejections enough to rely on them.
Your anecdata is surprisingly compelling, but I keep coming back to the production system which so strongly incentivizes examiners to move cases. If an examiner finds a 3rd party submission or a foreign office action reasonable, they have direct financial motivations to use those rejections. The idea that US examiners in particular would resist such motivations based on not being the one to find the art just seems implausible. Perhaps there is some other structural distinction, like US examiners being particularly poorly trained in claim interpretation and mapping. As unflattering as that is, it seems more likely than US examiners leaving money on the floor because they want to use a reference that they found.
Ben,
It is no shock at all that you find something that does not fit into your preconceived notions as baffling.
I am trying to remember a comment of yours that displayed truly critical thinking and not a one of yours can be recalled.
You are the epitome of a 2d person trapped in a circle unaware of even the possibility of getting out by way of a third dimension.
Piling such extensive burdens and restrictions on applicants would be incompatible with recent initiatives to expand access to patents for under-resourced individuals.