Hi Sy,
In the case of volume: It was explained to me that most patents are automatically rejected on their first filing, by a US Patent Attorney.
Keeping in mind that his specialty was in business plans, have you ever had any experience with this?
In the case of volume: It was explained to me that most patents are automatically rejected on their first filing, by a US Patent Attorney.
Keeping in mind that his specialty was in business plans, have you ever had any experience with this?
As a former Patent Examiner, I can offer insight to the process.
What a lot of people don't know is that a Primary Examiner has, on average, about 15 hrs, give or take, to handle an application. In this time he has to read the case, which get longer all the time, try to understand it, no matter how bad it is written or translated from a foreign language, search the prior art, apply the art to an ever increasing amount of claims in a written office action, wait up to six months for the claims to be amended or argued by the applicant, read the case again since it is not remembered after six months, probably do another search on the amended claims, maybe reject it again because the attorney or applicant was incompetent to make a good case, or just going through the motions to see if the examiner was clueless, then six months later, maybe answering an appeal brief if it was not allowed. The office has not extended the time to handle an application in over a generation, even though the technology is more and more complex, the number of prior art patents has more than doubled, and the cases get bigger.
It is a high pressure environment with a cold, unforgiving management. More people are fired for low production than any other non-defense agency.
Vacations are never pleasant since you know cases are building up on your desk for your return, and you have a fixed amount of days to handle them from the time they arrived in the office, no matter how long your vacation or absense to handle a death in the family.
So before criticizing the examiners, walk a mile in their shoes. The turnover there is incredible. Half the hires are gone in three years.
What a lot of people don't know is that a Primary Examiner has, on average, about 15 hrs, give or take, to handle an application. In this time he has to read the case, which get longer all the time, try to understand it, no matter how bad it is written or translated from a foreign language, search the prior art, apply the art to an ever increasing amount of claims in a written office action, wait up to six months for the claims to be amended or argued by the applicant, read the case again since it is not remembered after six months, probably do another search on the amended claims, maybe reject it again because the attorney or applicant was incompetent to make a good case, or just going through the motions to see if the examiner was clueless, then six months later, maybe answering an appeal brief if it was not allowed. The office has not extended the time to handle an application in over a generation, even though the technology is more and more complex, the number of prior art patents has more than doubled, and the cases get bigger.
It is a high pressure environment with a cold, unforgiving management. More people are fired for low production than any other non-defense agency.
Vacations are never pleasant since you know cases are building up on your desk for your return, and you have a fixed amount of days to handle them from the time they arrived in the office, no matter how long your vacation or absense to handle a death in the family.
So before criticizing the examiners, walk a mile in their shoes. The turnover there is incredible. Half the hires are gone in three years.
Pooge,
I wasn't trying to be critical. I apologize if that is the impression you received.
The description I was given was more in depth, but possibly simplified a bit.
I definitely realized that there is a lot of pressure to process claims.
I'm interested, and that is why I asked. I would like to get a better understanding of the process.
The information you gave, to me, is helpful and appreciated.
Regards,
David.
I wasn't trying to be critical. I apologize if that is the impression you received.
The description I was given was more in depth, but possibly simplified a bit.
I definitely realized that there is a lot of pressure to process claims.
I'm interested, and that is why I asked. I would like to get a better understanding of the process.
The information you gave, to me, is helpful and appreciated.
Regards,
David.
Pooge, you have me interested in how one comes into a career as a patent examiner. To my thinking it's such a specialized thing, so how do they recruit? Sounds like the work could be smothering and the environment discouraging. But then, traditional administrative agencies are built to run slowly, and everywhere and too often the so-called management positions are filled by those proven unworthy.
Anyway, do the examiner positions, not necessarily the specializations they represent, require special training or certification? If they do, I'm curious about how one obtains it - through a university, something like the boot camp for auditor trainees that the GAO operates?
Anyway, do the examiner positions, not necessarily the specializations they represent, require special training or certification? If they do, I'm curious about how one obtains it - through a university, something like the boot camp for auditor trainees that the GAO operates?
NanoFrog said:
Patent Attorneys don't reject. They prosecute the application before the Patent Office. Patent examiners examine and reject or allow the application. Patent examiners may have a law degree, but their job is as an examiner and not an attorney.
Patents are not automatically rejected by the Office, although they are usually rejected on the first Office action. This is not so much controlled by the examiner as by the attorneys. Attorneys WANT a rejection on the first office action to find out the hand the office is playing. They intentionally write broad claims to see what the examiner uncovers in the prior art, so they can then write claims as broadly as possible while avoiding all known prior art. While not automatic, it is certainly part of the culture. This is what a good attorney will do to get the best claims for his client. The strongest claims are written only with the knowlege of the prior art.
As stated before, examiners have a production requirement. They must get a case disposed every 15 hrs. or so, on average. Each case receives two "counts" for the examiner. The first count is given for the examiner's first action, and the second count is given for the last action or disposal. There is no count given for any other intermediate action, no matter how many, or how long. Thus, it is to an examiner's advantage, production wise, to allow every case on the first office action, because he gets both counts in one action. He is a higher producer with all of the rewards that go with it. Nothing would please an examiner more than seeing a well writen case, with description and claims that don't require a lot of time consuming edits, combined with a good set of prior art with the claims written so as to not be obvious over that art. However, it is not unusual to spend a good chunk of your time budget to uncover the best prior art reference published by the same inventor, that the inventor didn't even tell me about. Think an examiner isn't biased after this? No breaks cut for this guy. The examiner is not going to give any more of his precious time to help this guy.
So, if an examiner doesn't take much effort to read the application, doesn't take much effort or time to find prior art, etc., and allows the case on the first action, he gets his two counts in less time. He appears to be a great examiner to the office for high production, and a great guy to the applicant for issuing his possibly invalid patent. Meanwhile, the conscientious examiner, who works unpaid overtime to do the right thing, and barely makes his production, is not held in high regard. It makes his immediate supervisor look bad because the office demands that a mid-level supervisor's employees average over 100% production to get a satisfactory rating himself. So, if the diligent examiner doesn't do 100%, the supervisor doesn't like him, and may start giving him the harder, more demanding cases, etc., as gratitude.
patch said:
First, you need a degree engineering, science or a technical background. They're begging for hires. They entice with high pay and law school tuition. The pay is good, especially for a government job, but you have to eat a lot of dung. They train, but many quit before training is over. Don't get me wrong, the first year or so can be interesting. But after a few years, the number of oil drops to the head can add up real fast. Some people like it. You have to be cut out for it. Some people are perfectly satisfied sitting in front of a computer, all alone, pushing paper all day. For the engineer who would rather turn on a soldering iron, or use a computer to design rather than argue, it can be insufferable. It used to be attractive for the information at your fingertips, with easy access to scientific lit and patents; but that aspect has diminished with the internet availability of info.
Hi Pooge,
Your explanation definitely clears a few thing up for me. And it does seem like a very stressful career path.
Thanks,
David.
Your explanation definitely clears a few thing up for me. And it does seem like a very stressful career path.
Thanks,
David.
Pooge, thanks for your candor! I would melt down in no time flat in the situation you describe. I see that some places where longer-term employees, unless they have an outside life, become like walking dead people. Captive clients can get pulled down too.
Have you ever seen or heard of a patent examiner (or any in the chain of approval) effectively shape proposals to reflect any personal biases, or maybe even keep a hand on the scale to effectively steer a trend?
Have you ever seen or heard of a patent examiner (or any in the chain of approval), to their own advantage, borrow ideas or make deals with applicants?
patch
Have you ever seen or heard of a patent examiner (or any in the chain of approval) effectively shape proposals to reflect any personal biases, or maybe even keep a hand on the scale to effectively steer a trend?
Have you ever seen or heard of a patent examiner (or any in the chain of approval), to their own advantage, borrow ideas or make deals with applicants?
patch
patch said:
NO. But I don't really understand your question. The examiner is an agent for both the applicant and the government. He is there to see that applicant does not claim more than he is entitled to. If the attorney/applicant is cooperative, reasonable and/or competent, and doesn't burden the examiner with needless time hassles, the examiner may even help the applicant get more than he realizes he's entitled to. Very often an applicant doesn't realize where his ACTUAL invention is. The examiner would then redirect applicant's focus to the aspect of his overall design that would render the novel aspect of it. For example, an applicant may initially file an amplifier circuit and claim the whole thing as his invention, when it might be only the CCS that is novel. The examiner may then insist that the CCS be claimed in the amplifier.
Chances are he may not ask the applicant to claim just the CCS as a separate invention, unless applicant has already done so. The reason may be to cover his butt. If the examiner has spent his search budget looking for an amplifier with that CCS and is comfortable with his search that such an amplifier/CCS combo is novel, he may not have done an extended search to find out that the bare CCS is novel in itself. (This presumes that it was determined that it would not have been obvious to put such a CCS in an amplifier, btw) This illustrates why it is in the interest of the applicant to have the best art in front of the examiner. The examiner cannot be charged with being all knowing from a half-day search of patents. There huge source of prior art not at his fingertips, or at his leisure to search. Doing so would put him out the door in no time. The suffering, or bias, as you may call it, occurs when something is so obvious that you can't find a reference. You do your best to argue why it would be obvious to anyone's grandmother on their idiot side, but the attorney will harp on the fact that you don't have a teaching to make the rejection. This is fun (not!) when you have to write a 15 page reply brief to the board of appeals to eat up your time budget. I'm sure many attorneys have similar complaints about examiners, but it just goes to show you there are two sides to every story.
NO. If there was, I'm sure it would be highly secret, being that it would be highly unethical and illegal.
pooge, why is it that I never got YOU as an examiner? 😀
I'll say it again: there are good and bad examiners, and a good one will help you make a patent MUCH stronger and more enforceable. Addition by subtraction in many cases.
A bad one just eats up a LOT of expensive attorney time.
I'll say it again: there are good and bad examiners, and a good one will help you make a patent MUCH stronger and more enforceable. Addition by subtraction in many cases.
A bad one just eats up a LOT of expensive attorney time.
Sy,
While there are good and bad ones, as in any profession, it may be just as much a good or bad situation the examiner is in.
Like I said, examiner quotas haven't changed in a generation. Some examiners work in an art that hasn't changed much in that time. Others work in an art that is much more complex than a generation ago, yet have no more time to examine. The "bad" examiner may just not have enough time to survive doing the things that you'd like to see him do.
Bad attorneys may be just as much responsible for eating up attorney time, if not more so.
For example, the examiner is entitled to the broadest reasonable interpretation of the claims when applying art against the claims. To an outsider or uninitiated, it appears that the examiner is being unreasonable. This may or may not be the case. The examiner is trying to build a case history. Applicant's see this as unreasonable, because they think that they have something different than the applied art. The examiner is just trying to get the applicant to write the claims to what his invention is, and not cover more than he is entitled to. Very often, an examiner will apply what appears to be the more irrelevant art just to give an indication how overly broad the claims are, or how broadly they may be interpreted. If an applicant's invention is an amplifier and he claims the moon, the examiner will photocopy a picture of the moon and apply it. It may be that the attorney, in attempting to claim things broadly, instead uses very unspecific language that can be interpreted broadly. This may involve extracting further comments from the attorney that make the unspecific language more limiting via the comments in the record, or amending with more specific language. Attorneys often use vague language to try to achieve broader claim language, when broad claims can be just as acheivable with specific, clear language. It is an art, just like any other profession.
While there are good and bad ones, as in any profession, it may be just as much a good or bad situation the examiner is in.
Like I said, examiner quotas haven't changed in a generation. Some examiners work in an art that hasn't changed much in that time. Others work in an art that is much more complex than a generation ago, yet have no more time to examine. The "bad" examiner may just not have enough time to survive doing the things that you'd like to see him do.
Bad attorneys may be just as much responsible for eating up attorney time, if not more so.
For example, the examiner is entitled to the broadest reasonable interpretation of the claims when applying art against the claims. To an outsider or uninitiated, it appears that the examiner is being unreasonable. This may or may not be the case. The examiner is trying to build a case history. Applicant's see this as unreasonable, because they think that they have something different than the applied art. The examiner is just trying to get the applicant to write the claims to what his invention is, and not cover more than he is entitled to. Very often, an examiner will apply what appears to be the more irrelevant art just to give an indication how overly broad the claims are, or how broadly they may be interpreted. If an applicant's invention is an amplifier and he claims the moon, the examiner will photocopy a picture of the moon and apply it. It may be that the attorney, in attempting to claim things broadly, instead uses very unspecific language that can be interpreted broadly. This may involve extracting further comments from the attorney that make the unspecific language more limiting via the comments in the record, or amending with more specific language. Attorneys often use vague language to try to achieve broader claim language, when broad claims can be just as acheivable with specific, clear language. It is an art, just like any other profession.
That sort of situation is not what makes me deem an examiner as "bad." "Bad" is when the objections get so frivolous and so far afield that it becomes a huge time and money waster. Or examiners that have problems with English. I had to take one examiner to appeals (at great personal expense) because he couldn't distinguish a wine cork from a golf ball. Yes, I won that appeal without any problems (other than the extra $50,000 that cost).
On the other hand, I had one particularly excellent examiner (I'll name names: Josephine Barr) who helped me tighten the claims language enough to make the patents she examined for me much stronger- I ended up getting a licensing deal I wouldn't have gotten had she not directed me toward making my claims read better.
The rush thing, along with some fundamental structural problems, does make me label the system as "bad." I've had particular issues with interferences and the apparent failure of examiners to spot them. I attribute this to the workload and general atmosphere rather than incompetence on the examiners' parts, though it admittedly could be the fault of that same golf ball ninny.
The foreign language situation is a problem. I don't know how foreigners do the job as examiners. It's hard enough when English is your first language. Sometimes I feel like maybe they have it easier in that they may not recognize somes issues due to the language, and therefore not create extra work for themselves to handle if the issue isn't recognized. However, it has to be hard to find the right words.
I've have also recognized cultural issues. Not wishing to criticise by generalizations, but some cultures are just not as nit-picking or argumentative as ours. They tend not to show some back bone when needed. Others are trying to send money home, so they are going to make their production and more. Management loves that. Not saying they don't work extra long hours for it, though.
The fact is that there is a high proportion of foreigners as engineering graduates. That is the hiring pool fact-of-life. I know this isn't any comfort to you when you've spent a lot of money, though.
On the examiner side, we receive a lot of applications from foreign countries with really poor translations. Think about the simple assembly intructions you've read in products from Asia, and compound that tens times with complex subject matter. We have to search it, even if it is unclear. Attorneys have told me the foreign applicant does not want to pay to have it edited better before filing. They say they'll do it after determining whether to proceed after the examiner sites art.
I know of attorneys who "punish" examiners by flooding them with many many extra claims. How strong a patent do you think would issue with that strategy?
I've have also recognized cultural issues. Not wishing to criticise by generalizations, but some cultures are just not as nit-picking or argumentative as ours. They tend not to show some back bone when needed. Others are trying to send money home, so they are going to make their production and more. Management loves that. Not saying they don't work extra long hours for it, though.
The fact is that there is a high proportion of foreigners as engineering graduates. That is the hiring pool fact-of-life. I know this isn't any comfort to you when you've spent a lot of money, though.
On the examiner side, we receive a lot of applications from foreign countries with really poor translations. Think about the simple assembly intructions you've read in products from Asia, and compound that tens times with complex subject matter. We have to search it, even if it is unclear. Attorneys have told me the foreign applicant does not want to pay to have it edited better before filing. They say they'll do it after determining whether to proceed after the examiner sites art.
I know of attorneys who "punish" examiners by flooding them with many many extra claims. How strong a patent do you think would issue with that strategy?
Anyone who looks for fraud in most any larger organization will find it. In small organizations too, but not in every organization. Usually it happens because some trusted individual has acquired too much control in a process and they take advantage of it. These people are typically friendly, literate, productive men and women employees in nice business clothes who keep their shoes polished. Can include professionals in licensed industries, sworn to ethical conduct.
I have seen regulators who did not carry out the law, who ignored some key duties, who adjusted some of their decisions for a particular outcome. Acting on their own, these people illegally manipulated a process to advance their personal interests - sometimes only to make a sort of surprise gift to please a particular regulated party in hopes of being offered more interesting career oppotunities. (These turncoats don't get it - the fact that regulated parties want to keep sypathetic parties in the agencies; they are not about to extract a competent eager helper unless a similar replacement can be installed). Now all that is really common.
At least for regulatory agencies I have seen, the really bad frauds happen when people from outside groups that hold power get together and act on a plan to work on the regulator - to get the regulator to swing a decision or change a process that will get them around the usual requirements and give them an advantage over competitors. In some cases these groups manage to pull in employees who want a way out of the agency or some other compensation. All of that is considered racketeering, its common.
Has anyone ever seen or heard about employee/management fraud or malfeasance, like I've described it or otherwise, in the patent industry and US Patent Office? Just curious!
patch
Among patent attorneys, it's SOP. And, of course, the European system is totally and blatantly rigged to discourage individual or small-entity inventors.
I've been in the invention biz a long time and I have *never* heard of corruption among examiners. Maybe it's happened, but it would have to be quite rare.
I've been in the invention biz a long time and I have *never* heard of corruption among examiners. Maybe it's happened, but it would have to be quite rare.
I've never heard of fraud in the patent review/regulation process either, nothing about anyone.
Certain regulatory processes can have interesting outcomes. I am curious about patent regulation because I seem to see some red flags in there (sorry if I am repeating, I just want to summarize and let the issue go for now):
Where the mechanics of the process are a mystery to and completely out of the consciousness of almost everyone; where a particular outcome could confer a big monetary advantage to one party over all others; it controls in a field of relatively few very large players and many small ones; where seemingly one or a very few experts (often old-timers) are in the control position; where the organization is widely assumed, without hard evidence, to operate with high integrity.
I've never read of any problems at the US Patent Office.
Certain regulatory processes can have interesting outcomes. I am curious about patent regulation because I seem to see some red flags in there (sorry if I am repeating, I just want to summarize and let the issue go for now):
Where the mechanics of the process are a mystery to and completely out of the consciousness of almost everyone; where a particular outcome could confer a big monetary advantage to one party over all others; it controls in a field of relatively few very large players and many small ones; where seemingly one or a very few experts (often old-timers) are in the control position; where the organization is widely assumed, without hard evidence, to operate with high integrity.
I've never read of any problems at the US Patent Office.
"Prior Art" -- my wife and I went to an cancer research meeting a few years back -- reading the summary book of presentations on the flight out to LA I pointed out what I thought to be a block-buster in her field -- her remark was "that was discovered in 1973, but no one reads the old journals anymore." All the young researchers believe that there was no prior art before they were born.
She and one of her collaborators allowed the guy to make his presentation, and when it was over they cited the "Prior Art" much to his embarrasment.
Revenge, thy name is woman.
(Can you imagine, to get a degree in Chemistry in the U.S. in the 1960's you actually had to be able to read German!)
She and one of her collaborators allowed the guy to make his presentation, and when it was over they cited the "Prior Art" much to his embarrasment.
Revenge, thy name is woman.
(Can you imagine, to get a degree in Chemistry in the U.S. in the 1960's you actually had to be able to read German!)
If published here or on any other non-personal/Cooperate website, their can be no copyright.....
Published on a personal/cooperate website, you have to ask permission to copy the circuit !!!!!
Published on a personal/cooperate website, you have to ask permission to copy the circuit !!!!!
ACD said:
I dont think you can say that, so generally. Lots of stuff is published here, except its not by the inventors😉
🙂
steenoe;
You are right....
I thought I just make a quick comment here before dinner, and I agree that some aspects where missing 😉
You are right....
I thought I just make a quick comment here before dinner, and I agree that some aspects where missing 😉
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