Now, one thing, though...what are the criteria for determining the "obvious and broad patents" to select the good 500 applications? Or are you suggesting that after full examination based ons the current system, all of the surviving applications that would be considered patentable today then be somehow subjected to some kind of ranking system and the top 500 allowed to issue? Wouldn't this end up being like some kind of lottery since, compared to a conservative allowance rate of over 100,000 (assuming the current basic examination quality is improved) wouldn't one expect more than 500 to be meritorious? And, then, how easy would it be to do the ranking?
With regard to the question of patent quality I have little faith that things will improve much, in at least the near term.
Since the late 1960s the management culture at the PTO has shifted from a strong "nothing is patentable unless you really, really make a good argument and present narrow claims" to a "keep application pendency down by getting allowances/abandonments asap" approach. Since the applicant can argue rejections, which take time and energy to rebut in a new rejection, it is easier to just say "I agree" and allow the application. This is enforced by a quota system which, simplified, amounts to counting disposals (allowance by the examiner, abandonment by the applicant, or writing an examiner's answer to an appeal to the Board of Appeals filed by the applicant). When you throw in other performance elements such as responding within set time limits to applicant's responses, starting work on the oldest application in an examiner's docket, the actual "quality" performance elements (finding the best prior art and applying in logical, well reasoned rejections) are actually a relative minority of an examiner's performance rating (looking at page 35 of the following Inspector General's Report, the first three elements are "quality elements, amounting to 40%; the remaining 60% are production time elements, service to the public, etc. This report, incidentally, is even more PHB oriented than the incredible level that PTO management already is)
Added to this mix is that fact that, although the time allotted to examine each application is roughly unchanged over the last few decades it has gotten tougher to do a quality examination than it was years ago. This has been caused by several factors, but the main ones are:
less ability to "write off" time spent on important examining related activities, such as maintaining search files (classifying foreign patents and the mass of non-patent documents into the Patent Classification scheme, which amounts to a way of "tagging" such documents, a valuable supplement to full text searching, and historically, the primary means to search)
ever increasing requirements to justify making rejections; they have to discuss in bloody detail how each element of the claim is shown by the prior art, used in the same way, and, for obvious rejections, why it is proper to used disclosures from two or more references, the "motivation" to do so having to be derived by statements actually in the references, and not just by the examiner's deductive reasoning. Indeed, a rejection can be judged to be improper for not being properly supported by the cited prior art, counting as an error against the examiner.
lots of other, constant distractions, procedures, and requirements encountered on a daily basis that have only multiplied over the years.
When management is confronted with the complaints from influential "patent system users" such as IBM here, their typical response is to institute "quality review" programs where people who can't be as expert as the typical examiner who regularly works in the art of the application being reviewed is making judgements on issues like search quality, relevance of prior art to the claims, etc. The reviewers can do additional searches, basically spending more search time on the application, but with the consequence that the examiner will be charged with an error and suffer a decreased performance rating, rather than having more time to search the application and find the relevant art in the first case. What PTO management tries to do is like what PHBs in programming shops try to do by demanding more bug free code by increasing the QA department and then firing programmers who wrote the buggy code without changing the ever shorter deadlines. And, remember, that patent examination is not project work, but production work, that just on and an with no breaks until retirement, resignation, firing, or death.
Something like this happens all the time; one big example is what happened after the invention of solid state electronic components (e. g., transistors). Lots of patent applicants would try to broadly claim circuits that did the same functions as vacuum tube-based ones, but with solid state components instead.
Of course, there could be a patentable difference if details of the solid state circuit required some really new kind of arrangement, but many times a broad "wherein the oscillator circuit uses solid state active components" clause would be argued over a similarly functioning circuit showing a tube based oscillator, for all the usual reasons already generally established for solid state devices ( low power, less space, longer lifetime, etc).
The criterion SHOULD be if implementing an old method in an internet context really involves such a unique thing in light of lots of other, prior art methods that have been implemented in an internet context (this, of course, is presuming you even think such kinds of methods SHOULD even be considered patentable in the first place)
Case law applicability follows a hierarchy of review. A Board affirmance, if not appealed, governs the case; if the Office deems the Board decision important enough it will issue instructions to examiners, in general, to follow, but this is relatively rare. The applicant, of course, can appeal to the US Court of Appeals for the Federal Circuit. If they uphold the Board's decision upholding the Examiner's Final rejection, and they don't deem the case to involve insignificant, the decision will be published and will be controlling case law for the Office.
The CAFC is the main source of Patent Case law, since few patent cases ever get heard by the US Supreme Court; of course, if the Supremes do speak, then that governs.
Under most circumstances pending applications are published right after 18 months after filing 35 USC 122. What is published is, pretty much, the application AS FILED (Although the applicant can request that the application , as amended within one month of filing be used), which means the generally broad, intially filed claims (which actually specify the reach of the invention) 37 CFR 1.215.The claims may well have been narrowed by amended by now (if examination on the merits has started).
Of course, as I'm sure the Slashborg will instantly react, it will probably issue with even broader claims.
My understanding is that each and every claim stands on it's own.
This is correct; however.....
Now, some claims refer to other claims... so, you can kill multiple claims by killing the underlying claim.
This is not necessarily true, at least as to validity of a "dependent claim" whose "parent claim" has been killed.
According to 35 USC 112.....
A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
If you kill a parent claim, a dependent claim must include a further limitation; this might be enough to overcome invalidation that is effective against the parent claim; of course, a distinct invalidation (using, for example, additional prior art) could be made against the dependent claim; in other words, invalidating a dependent claim automatically implies invalidation of the entire chain of parent claims, but the contrary is not necessarily true.
Whenever I get stuck in the vicinity of a blaring TV set (e. g., waiting room) I become very uncomfortable; it feels to me as if I were being pounded on, the absolute worst being daytime shows like low brow talk shows featuring low class idiots and corresponding commercials (used cars, bad credit, shysters, plugs for other idiot shows, etc.)
I bring something to read, but if I can't find a quiet place to sit, I might have to consider bringing earplugs.
Sorry, but the following sentence from 35 USC 103 (a) removes any requirement that lots of R & D etc. be required for non-obviousness:
Patentability shall not be negatived by the manner in which the invention was made.
This goes back to the 1952 substantial revision to the Patent Laws that codified the obviousness requirment and was included specifically to reverse a Supreme Court Ruling (Too lazy for me to research) that had set forth a so called "Flash of Genius" requirement for patentablility.
That's also why you will see references using "Invention or Discovery" because even if something "falls into the lap" of a person they can patent it (as long as it wasn't publicly known or used).
Basically, as long as the result is new, useful, and nonobvious, then the inventor or discoverer gets the patent.
I know you are arguing against the merits of this, but this is the legal basis permitting such methods to be potential subject matter eligible for patent protection in the US under 35 USC 101.
It may surprise many to know that patent officers are often promoted on how many patents they reject, not how many they approve
Sorry, but this is not true! In fact, is quite the opposite. There is a production quota system that counts, basically, The number of first actions on the merits and the number of disposals (Allowance, abandonment by the applicant, and sending a case to the Board of Appeals after a Final Rejection). If an applicant responds to a first action rejection with an amendment, even if the case is then allowed, that's two actions to get both "counts".
On the other hand if the application is allowed right as filed, the Examiner gets both counts right away. Going the opposite extreme, if after an amendment to a first action rejection the case is still rejected (Which is ususally a final rejection) the persistant applicant can file yet another amendment (not enterable by right after a final rejection), and if still refused, can file to the Board of Appeals, to which the eExaminer writes an Examiner's Answer on Appeal, and only then gets the second count.
So rejections are not only favored, by the production system but are actually discourged, and an examiner can be penalized for making a bad rejection (not supported by the cited prior art, not properly explained, etc). The incentives clearly a weighted toward allowing stuff .
I've kept out of these recent patent debates for a while but I'll comment on your post:
I'm curious as to what the effect of giving each examiner a 'point' upon rejecting a patent would be. I'm not sure whether an examiner is expected to identify all the issues with a patent when it is submitted -- if so, this obviously wouldn't be great, since it would mean that there is incentive to identify smaller chunks of issues to get more resubmissions per patents.
The grandparent poster is correct: There is one "point" (Informally called a "count" or "counter" inside the PTO) given for each application filing; One when the first office action on the merits is done and the second when the application is disposed, which can be by 1) allowance, 2) abandonment, or 3) on an appeal, after the Examiner's Answer on Appeal is sent out, which happens if the patent applicant wants to fight for the application after a final rejection has been made.
In the real old days (up to about the 1960's or so) an examiner's work would be credited for each office action produced; the examiner could keep rejecting the application until he/she felt that all the issues had been developed, so a "final rejection" would be made; applicant's recourse could be a response and/or a proposed amendment (not entered as a matter of right) followed by either abandonment, appeal, or filing a continuing application (with a brand new application fee) to continue the process (the continuation generally would get the filing date of the "parent" application, important to exclude any prior art that might have been published while the parent application was being prosecuted)
The Patent Bar was not happy about the length of time it was taking for patents to be issued, so responding to pressure, the Patent Office adopted a new policy, called "Compact Prosecution", all within the existing statutory framework. In this policy, in general, the a second office action rejection is made final. The examiner is expected to develop all issues as much as possible, plus cite prior art on covering likely amendments to the claims that the applicant might respond with. At the same time, the "two count" system of production measurement was instituted as a disencentive for examiners to just continue sending out non-final rejection after non-final rejection, which is still possible (but even more heavily discouraged by management) to the present day.
The point here in this long winded comment is to give some historical background on what the examination environment has become. Note, also, that there is a great incentive for an examiner to allow an application on the first action; that nets the two counts at once and avoids all the work of handling responses from a rejection.
Oh, yes. Whoever decided that the USPTO should be self-funded is nuts. There are two very small benefits to self-funding. First, it's easier to do accounting with self-funding, and work out what expensive spots in your organization as a whole are -- organizations that can't manage to fund themselves. Second, it encourages organizations not to just keep requesting more funding and try to improve efficiency -- not a *huge* deal for the USPTO, which doesn't need to be all that efficient.
Gerald J. Mossinghoff, the late President Reagan's choice for Commissioner for Patents and Trademarks. Up through the Carter Administration, the PTO had been in a period of gradual decline, with the size of the Examaning corps down to around 800; the main opposition to the patent system in the Federal Government was the Dept. of Justice's Anti-Trust division, who had influence at the time. When the Reagan Adminstration came in with a decidedly pro big business tilt, Mossinghoff was the one to carry out this policy. He is noted for four main changes to the PTO and patent policy: 1) a large increase in the examaming corps; it was planned to go up to about 1800, a more than doubling from the size when he took office 2) Revised and increased Patent fees with a go
Well, you are of base about, broadly, "method" patents; Such patents have been issued in the US since the beginning of the US patent system. In fact the first US patent issued was for a process for making potash; it was issued in 1790 and was signed by Thomas Jefferson, then Secretary of State.
This, BTW, was not patent #1; The current US utility patenting numbering dates from 1836, if I recall my history correctly.
There would no legal basis for the PTO just stop issuing "method" patents; they are explictly (in a broad sense) permitted under 35 USC 101:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title
Software and business methods were interpreted as being a "process" within the scope of section 101. The PTO cannot just say "screw you" and say "we don't like software patents" (separation of powers and and all that stuff) the issue has made it up to the Supremes a few times, and, except for a case in the late 60's (the Benson case) subsequent court decisions whittled away at Benson until it has ended up a dead husk.
Now, this issue of applying the other requirements (novelty, nonobviousness) is a whole other issue, and I won't start on that here
...Governmental agencies cannot hold patents. Only individuals and corporations hold patents
US Patents may be owned by the Government. US Patents still must technically be applied in the name of the inventor(s) (with a few exceptions not relevant here), but often are assigned to others, typically the inventor's employer or as part of a contractual agreement (with is typical in most employment contracts).
It is common to see patents assigned to DOD or NASA, for example.
(I wonder if a better mousetrap has ever been assigned to HUD?)
Correction: The Obviousness (35 USC 103) requirement for patentability is to be judged by a hypothetical "person of **ordinary** skill in the art" In practice this means they are typical people working in the art to which the invention pertains.
Furthermore, I am not aware of a situation where someone's testimony in a patent case was challenged because he possesed more than ordinary skill in the art, but (IANAPL) I could be wrong.
Agreed. A further clue is the fact that this was decided in a state court. Had it been a patent infringement case it would have come out of a Federal District court ( 35 USC 281 )
Actually, this corresponds to 35 USC 102 (b)...note the "before the invention by the applicant" time requirement.....this is generally before the filing date of the application, and can be established by proof of certain acts by the applicant. However, consider 35 USC 102 (b):
A person shall be entitled to a patent unless -
(b)... the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States...
Not if the acts described in this section (but not by the inventor) are done more than a year prior the filing date of the application, they will BAR granting of a patent...this is called a Statutory bar, in fact. The applicant, even if he can show that he invented it earlier, can't get around this.
This patent is a Continuation of another application, so it is entitled to a filing date of the earlier application. Thus it has an effective filing date of July 21, 1998. So, any prior art dated before July 21, 1997 will be a statutory bar to the claims in this patent.
Sadly, this invention was described in a printed publication (Performance Appraisal Plan, certainly out by 1985 at the latest) more than a year before any possible application could be filed...rejected under 35 USC 102(b).....oh, wait, probably nobody will think of looking for this.....never mind.....
The "Production Goal Achievment" metric is expressed as a percentage of the expected "Hours per Balanced Disposal" for an examiner. This expected goal is based on an overall office wide goal that is distributed to each examining group. Different areas of technolgy, or "arts" get adjustment factors, supposedly based on complexity. If someone wants their particular art rated more complex then some other arts must be rated LESS complex, i. e., it's a zero sum game, so, in practice, this doesn't change very often becuase the managers affected will fight tooth and nail not to be responsible for more production.
Now this goal is for a regular examiner at the GS-13 level; there is a "Productivity factor" (with the historic name of "Feldman Factor" named in (dis)honor of a former Deputy Assistant Commissioner for Patents); thus a GS-5 entry level examiner gets a factor of.5; A GS-15 Expert Primary Examiner gets a factor of 1.45 (if I remember correctly)
Over time time an examiner accumulates "Examining Hours", which is time at work not covered by leave or so called "other time" which management is always trying to cut down.
Now, the "Balanced disposal" is another "Feldman" invention (ha-ha): An examiner gets one "count" for the First action on the merits for each application, and once count for a Disposal (allowance, abandonment, or submitting an Examiner's Answer to an appeal filed by a patent applicant). Thus, no "counts" are awarded for all work that is not a first action or a disposal which is done to discourage stretching out prosecution.
A balanced disposal is then calculated by the infamous formula BD = (N + D)/2 where N is the number of first actions and D is the number of Disposals.
Thus percent acheivement is calculated by the formula ((H/BD)/(Expectancy/FF ) ) * 100 where H is the number of examining hours for the time period being measured (common measurement periods are biweekly, quarterly, annually), BD is the balanced disposal figure counted in the time period, expectancy is the GS-12 Goal assigned to the examiner based on the art area to which he or shis is assigned (the "docket") and FF is the "Feldman Factor" assigned based on Grade and "contact and commitment authority".
One final note: The overall office goal has generally (or certainly used to be) quasi-static, rarely changing. On the Office gets pressured to meet Congressinally dictated production requirements each fiscal year. Often, if the all examiners worked a nominal number of examining hours a year and and all performed at 100% there would be a short fall, so management often uses management tools such as "incentives" to achieve over 100% including bonuses, overtime (which is paid, albeit capped, but adds to the examining hours for the production calculation) or just plain coersion ("Anyone not doing 110% this quarter will be required to explain to the group director why this was not done").
So there is no explicit requirement that a certain precentage of the "Disposals" be allowances; however, if the production is low, meaning below 100.0%, or even more if the managers are trying to squeeze out more, then that employee, even if above 95% will possible start being harassed, and if they have a lot of abandonments (usually meaning they beat down applicants) relative to allowances, or lots of appeals, then they will be pressured to allow more cases because their standards are too high, or their boss will start criticizing their rejects as incorrect, etc.
The place is a snake pit, and it has getten even worse since I left 12 years ago.
This is absolutely true; it has become even worse since I left the place over 10 years ago. And it goes a bit further than just being in favor of granting patents as a matter of principle; I will just comment on one aspect of the issues raised in the parent.
Apart from the often discussed issues of patentability of software patents, and, indeed, the whole issue of whether all intellectual property is proper, there is a significant institutional culture issue that has a strong influence on how the Office functions that took root several decades ago and has, regretfully, increased, monotonically, over time. The management attitude, in a nutshell, is that patents aren't "examined", they are "processed". The examination process is driven by production "goals"; to be rated in the key rating category of "Production Goal Achievement" as "fully successful" you must have at least 95%; less than that you are marginal; less then 90% you are "unsatisfactory", meaning your entire rating is "unsatisfactory" meaning a "90 day letter" to get it "fully successful" else you are fired. Also there are other time related requirements to meet, such as no amended application pending more than two months without an action. Persons get fired (yes, this does happen) almost always for low production or exceeding time limits for actions, almost never for improperly allowing claims.
About the only time you ever get static for improper allowance is when the management doesn't like you (not a team player, being active in the union, etc.) but your "numbers" are all good, so then they will strain and try to misinterpret stuff to make a crappy rejection (which, BTW, is another way they can ding you, if, in their judgement, your own rejections are not "justified")
I can say, from my experience, that there have been good and consciencous folks, some real turkeys (but who produce > 100% all the time and don't make blatent errors; they are mangement pets and are often groomed as future managers, making the old management culture self perpetuating); the vast majority of the working stiffs want to do a good job, the the management culture is just totally antithetical to a good, healthy and balanced work environment.
This has been a design principal since at least 1930's (in the US, at least) when Centralized Traffic Control (tm) and remote control systems were developed. the low level "Field" equipment is designed to reject the display of other than a "stop" signal unless 1) No conflicting route has been set AND 2) all track "appliances" (switch points, movable bridges, etc.) are "lined and locked" in position. The request to clear a route, be it from a local operator using the old Victorian "armstrong" mechanical machine or the latest digital commands sent over almost any kind of telecommunications network to the field location will not succeed, barring failure of the field equipment.
Of course, if the communications network fails then the control of the railroad will fail (everything is at stop, or, at best, locked into a fixed pattern) which kills the railroad. Of course, there are manual procedures that can be followed, but, depending how much of the signaling system is left functional, can, at the least, be a huge burden to dispatch (and impossible if even radio contact is affected) and at worst, totally manual operation with the attendant safety risk.
Uhhh, well, that's the way it was prior to the 1980s and still mostly is.
You paid a filing fee, then, if allowed, you paid an issue fee. in the 1980's they added the concept of maintenace fees as new revenue stream that would also put a disincentive on non-revenue producing patents
Slashdot Mirror
Great! That's a good idea.
Now, one thing, though...what are the criteria for determining the "obvious and broad patents" to select the good 500 applications? Or are you suggesting that after full examination based ons the current system, all of the surviving applications that would be considered patentable today then be somehow subjected to some kind of ranking system and the top 500 allowed to issue? Wouldn't this end up being like some kind of lottery since, compared to a conservative allowance rate of over 100,000 (assuming the current basic examination quality is improved) wouldn't one expect more than 500 to be meritorious? And, then, how easy would it be to do the ranking?
Since the late 1960s the management culture at the PTO has shifted from a strong "nothing is patentable unless you really, really make a good argument and present narrow claims" to a "keep application pendency down by getting allowances/abandonments asap" approach. Since the applicant can argue rejections, which take time and energy to rebut in a new rejection, it is easier to just say "I agree" and allow the application. This is enforced by a quota system which, simplified, amounts to counting disposals (allowance by the examiner, abandonment by the applicant, or writing an examiner's answer to an appeal to the Board of Appeals filed by the applicant). When you throw in other performance elements such as responding within set time limits to applicant's responses, starting work on the oldest application in an examiner's docket, the actual "quality" performance elements (finding the best prior art and applying in logical, well reasoned rejections) are actually a relative minority of an examiner's performance rating (looking at page 35 of the following Inspector General's Report, the first three elements are "quality elements, amounting to 40%; the remaining 60% are production time elements, service to the public, etc. This report, incidentally, is even more PHB oriented than the incredible level that PTO management already is)
Added to this mix is that fact that, although the time allotted to examine each application is roughly unchanged over the last few decades it has gotten tougher to do a quality examination than it was years ago. This has been caused by several factors, but the main ones are:
less ability to "write off" time spent on important examining related activities, such as maintaining search files (classifying foreign patents and the mass of non-patent documents into the Patent Classification scheme, which amounts to a way of "tagging" such documents, a valuable supplement to full text searching, and historically, the primary means to search)
ever increasing requirements to justify making rejections; they have to discuss in bloody detail how each element of the claim is shown by the prior art, used in the same way, and, for obvious rejections, why it is proper to used disclosures from two or more references, the "motivation" to do so having to be derived by statements actually in the references, and not just by the examiner's deductive reasoning. Indeed, a rejection can be judged to be improper for not being properly supported by the cited prior art, counting as an error against the examiner.
lots of other, constant distractions, procedures, and requirements encountered on a daily basis that have only multiplied over the years.
When management is confronted with the complaints from influential "patent system users" such as IBM here, their typical response is to institute "quality review" programs where people who can't be as expert as the typical examiner who regularly works in the art of the application being reviewed is making judgements on issues like search quality, relevance of prior art to the claims, etc. The reviewers can do additional searches, basically spending more search time on the application, but with the consequence that the examiner will be charged with an error and suffer a decreased performance rating, rather than having more time to search the application and find the relevant art in the first case. What PTO management tries to do is like what PHBs in programming shops try to do by demanding more bug free code by increasing the QA department and then firing programmers who wrote the buggy code without changing the ever shorter deadlines. And, remember, that patent examination is not project work, but production work, that just on and an with no breaks until retirement, resignation, firing, or death.
Something like this happens all the time; one big example is what happened after the invention of solid state electronic components (e. g., transistors). Lots of patent applicants would try to broadly claim circuits that did the same functions as vacuum tube-based ones, but with solid state components instead.
Of course, there could be a patentable difference if details of the solid state circuit required some really new kind of arrangement, but many times a broad "wherein the oscillator circuit uses solid state active components" clause would be argued over a similarly functioning circuit showing a tube based oscillator, for all the usual reasons already generally established for solid state devices ( low power, less space, longer lifetime, etc).
The criterion SHOULD be if implementing an old method in an internet context really involves such a unique thing in light of lots of other, prior art methods that have been implemented in an internet context (this, of course, is presuming you even think such kinds of methods SHOULD even be considered patentable in the first place)
Screw slapping you, just go straight to your wallet.
Case law applicability follows a hierarchy of review. A Board affirmance, if not appealed, governs the case; if the Office deems the Board decision important enough it will issue instructions to examiners, in general, to follow, but this is relatively rare. The applicant, of course, can appeal to the US Court of Appeals for the Federal Circuit. If they uphold the Board's decision upholding the Examiner's Final rejection, and they don't deem the case to involve insignificant, the decision will be published and will be controlling case law for the Office.
The CAFC is the main source of Patent Case law, since few patent cases ever get heard by the US Supreme Court; of course, if the Supremes do speak, then that governs.
Under most circumstances pending applications are published right after 18 months after filing 35 USC 122. What is published is, pretty much, the application AS FILED (Although the applicant can request that the application , as amended within one month of filing be used), which means the generally broad, intially filed claims (which actually specify the reach of the invention) 37 CFR 1.215.The claims may well have been narrowed by amended by now (if examination on the merits has started).
Of course, as I'm sure the Slashborg will instantly react, it will probably issue with even broader claims.
My understanding is that each and every claim stands on it's own.
This is correct; however.....
Now, some claims refer to other claims... so, you can kill multiple claims by killing the underlying claim.
This is not necessarily true, at least as to validity of a "dependent claim" whose "parent claim" has been killed.
According to 35 USC 112.....
If you kill a parent claim, a dependent claim must include a further limitation; this might be enough to overcome invalidation that is effective against the parent claim; of course, a distinct invalidation (using, for example, additional prior art) could be made against the dependent claim; in other words, invalidating a dependent claim automatically implies invalidation of the entire chain of parent claims, but the contrary is not necessarily true.
Just over four years here.
Whenever I get stuck in the vicinity of a blaring TV set (e. g., waiting room) I become very uncomfortable; it feels to me as if I were being pounded on, the absolute worst being daytime shows like low brow talk shows featuring low class idiots and corresponding commercials (used cars, bad credit, shysters, plugs for other idiot shows, etc.)
I bring something to read, but if I can't find a quiet place to sit, I might have to consider bringing earplugs.
Not just a pair of glasses, but a pair of glasses mended with tape
Sorry, but the following sentence from 35 USC 103 (a) removes any requirement that lots of R & D etc. be required for non-obviousness:
Patentability shall not be negatived by the manner in which the invention was made.
This goes back to the 1952 substantial revision to the Patent Laws that codified the obviousness requirment and was included specifically to reverse a Supreme Court Ruling (Too lazy for me to research) that had set forth a so called "Flash of Genius" requirement for patentablility.
That's also why you will see references using "Invention or Discovery" because even if something "falls into the lap" of a person they can patent it (as long as it wasn't publicly known or used).
Basically, as long as the result is new, useful, and nonobvious, then the inventor or discoverer gets the patent.
The State Street decision.
I know you are arguing against the merits of this, but this is the legal basis permitting such methods to be potential subject matter eligible for patent protection in the US under 35 USC 101.
It may surprise many to know that patent officers are often promoted on how many patents they reject, not how many they approve
Sorry, but this is not true! In fact, is quite the opposite. There is a production quota system that counts, basically, The number of first actions on the merits and the number of disposals (Allowance, abandonment by the applicant, and sending a case to the Board of Appeals after a Final Rejection). If an applicant responds to a first action rejection with an amendment, even if the case is then allowed, that's two actions to get both "counts".
On the other hand if the application is allowed right as filed, the Examiner gets both counts right away. Going the opposite extreme, if after an amendment to a first action rejection the case is still rejected (Which is ususally a final rejection) the persistant applicant can file yet another amendment (not enterable by right after a final rejection), and if still refused, can file to the Board of Appeals, to which the eExaminer writes an Examiner's Answer on Appeal, and only then gets the second count.
So rejections are not only favored, by the production system but are actually discourged, and an examiner can be penalized for making a bad rejection (not supported by the cited prior art, not properly explained, etc). The incentives clearly a weighted toward allowing stuff
.
I've kept out of these recent patent debates for a while but I'll comment on your post:
I'm curious as to what the effect of giving each examiner a 'point' upon rejecting a patent would be. I'm not sure whether an examiner is expected to identify all the issues with a patent when it is submitted -- if so, this obviously wouldn't be great, since it would mean that there is incentive to identify smaller chunks of issues to get more resubmissions per patents.
The grandparent poster is correct: There is one "point" (Informally called a "count" or "counter" inside the PTO) given for each application filing; One when the first office action on the merits is done and the second when the application is disposed, which can be by 1) allowance, 2) abandonment, or 3) on an appeal, after the Examiner's Answer on Appeal is sent out, which happens if the patent applicant wants to fight for the application after a final rejection has been made.
In the real old days (up to about the 1960's or so) an examiner's work would be credited for each office action produced; the examiner could keep rejecting the application until he/she felt that all the issues had been developed, so a "final rejection" would be made; applicant's recourse could be a response and/or a proposed amendment (not entered as a matter of right) followed by either abandonment, appeal, or filing a continuing application (with a brand new application fee) to continue the process (the continuation generally would get the filing date of the "parent" application, important to exclude any prior art that might have been published while the parent application was being prosecuted)
The Patent Bar was not happy about the length of time it was taking for patents to be issued, so responding to pressure, the Patent Office adopted a new policy, called "Compact Prosecution", all within the existing statutory framework. In this policy, in general, the a second office action rejection is made final. The examiner is expected to develop all issues as much as possible, plus cite prior art on covering likely amendments to the claims that the applicant might respond with. At the same time, the "two count" system of production measurement was instituted as a disencentive for examiners to just continue sending out non-final rejection after non-final rejection, which is still possible (but even more heavily discouraged by management) to the present day.
The point here in this long winded comment is to give some historical background on what the examination environment has become. Note, also, that there is a great incentive for an examiner to allow an application on the first action; that nets the two counts at once and avoids all the work of handling responses from a rejection.
Oh, yes. Whoever decided that the USPTO should be self-funded is nuts. There are two very small benefits to self-funding. First, it's easier to do accounting with self-funding, and work out what expensive spots in your organization as a whole are -- organizations that can't manage to fund themselves. Second, it encourages organizations not to just keep requesting more funding and try to improve efficiency -- not a *huge* deal for the USPTO, which doesn't need to be all that efficient.
Gerald J. Mossinghoff, the late President Reagan's choice for Commissioner for Patents and Trademarks. Up through the Carter Administration, the PTO had been in a period of gradual decline, with the size of the Examaning corps down to around 800; the main opposition to the patent system in the Federal Government was the Dept. of Justice's Anti-Trust division, who had influence at the time. When the Reagan Adminstration came in with a decidedly pro big business tilt, Mossinghoff was the one to carry out this policy. He is noted for four main changes to the PTO and patent policy: 1) a large increase in the examaming corps; it was planned to go up to about 1800, a more than doubling from the size when he took office 2) Revised and increased Patent fees with a go
Well, you are of base about, broadly, "method" patents; Such patents have been issued in the US since the beginning of the US patent system. In fact the first US patent issued was for a process for making potash; it was issued in 1790 and was signed by Thomas Jefferson, then Secretary of State.
This, BTW, was not patent #1; The current US utility patenting numbering dates from 1836, if I recall my history correctly.
There would no legal basis for the PTO just stop issuing "method" patents; they are explictly (in a broad sense) permitted under 35 USC 101:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title
Software and business methods were interpreted as being a "process" within the scope of section 101. The PTO cannot just say "screw you" and say "we don't like software patents" (separation of powers and and all that stuff) the issue has made it up to the Supremes a few times, and, except for a case in the late 60's (the Benson case) subsequent court decisions whittled away at Benson until it has ended up a dead husk.
Now, this issue of applying the other requirements (novelty, nonobviousness) is a whole other issue, and I won't start on that here
One minor correction....
...Governmental agencies cannot hold patents. Only individuals and corporations hold patents
US Patents may be owned by the Government. US Patents still must technically be applied in the name of the inventor(s) (with a few exceptions not relevant here), but often are assigned to others, typically the inventor's employer or as part of a contractual agreement (with is typical in most employment contracts).
It is common to see patents assigned to DOD or NASA, for example.
(I wonder if a better mousetrap has ever been assigned to HUD?)
Correction: The Obviousness (35 USC 103) requirement for patentability is to be judged by a hypothetical "person of **ordinary** skill in the art" In practice this means they are typical people working in the art to which the invention pertains.
Furthermore, I am not aware of a situation where someone's testimony in a patent case was challenged because he possesed more than ordinary skill in the art, but (IANAPL) I could be wrong.
Agreed. A further clue is the fact that this was decided in a state court. Had it been a patent infringement case it would have come out of a Federal District court ( 35 USC 281 )
I guess your sarcasm sensor is malfunctioning.
Actually, this corresponds to 35 USC 102 (b)...note the "before the invention by the applicant" time requirement.....this is generally before the filing date of the application, and can be established by proof of certain acts by the applicant. However, consider 35 USC 102 (b):
... ...
A person shall be entitled to a patent unless -
(b)
the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States
Not if the acts described in this section (but not by the inventor) are done more than a year prior the filing date of the application, they will BAR granting of a patent...this is called a Statutory bar, in fact. The applicant, even if he can show that he invented it earlier, can't get around this.
This patent is a Continuation of another application, so it is entitled to a filing date of the earlier application. Thus it has an effective filing date of July 21, 1998. So, any prior art dated before July 21, 1997 will be a statutory bar to the claims in this patent.
Sadly, this invention was described in a printed publication (Performance Appraisal Plan, certainly out by 1985 at the latest) more than a year before any possible application could be filed...rejected under 35 USC 102(b).....oh, wait, probably nobody will think of looking for this.....never mind.....
Well, no.
.5; A GS-15 Expert Primary Examiner gets a factor of 1.45 (if I remember correctly)
/FF ) ) * 100 where H is the number of examining hours for the time period being measured (common measurement periods are biweekly, quarterly, annually), BD is the balanced disposal figure counted in the time period, expectancy is the GS-12 Goal assigned to the examiner based on the art area to which he or shis is assigned (the "docket") and FF is the "Feldman Factor" assigned based on Grade and "contact and commitment authority".
The "Production Goal Achievment" metric is expressed
as a percentage of the expected "Hours per Balanced Disposal" for an examiner. This expected goal is based on an overall office wide goal that is distributed to each examining group. Different areas of technolgy, or "arts" get adjustment factors, supposedly based on complexity. If someone wants their particular art rated more complex then some other arts must be rated LESS complex, i. e., it's a zero sum game, so, in practice, this doesn't change very often becuase the managers affected will fight tooth and nail not to be responsible for more production.
Now this goal is for a regular examiner at the GS-13 level; there is a "Productivity factor" (with the historic name of "Feldman Factor" named in (dis)honor of a former Deputy Assistant Commissioner for Patents); thus a GS-5 entry level examiner gets a factor of
Over time time an examiner accumulates "Examining Hours", which is time at work not covered by leave or so called "other time" which management is always trying to cut down.
Now, the "Balanced disposal" is another "Feldman" invention (ha-ha): An examiner gets one "count" for the First action on the merits for each application, and once count for a Disposal (allowance, abandonment, or submitting an Examiner's Answer to an appeal filed by a patent applicant). Thus, no "counts" are awarded for all work that is not a first action or a disposal which is done to discourage stretching out prosecution.
A balanced disposal is then calculated by the infamous formula BD = (N + D)/2 where N is the number of first actions and D is the number of Disposals.
Thus percent acheivement is calculated by the formula ((H/BD)/(Expectancy
One final note: The overall office goal has generally (or certainly used to be) quasi-static, rarely changing. On the Office gets pressured to meet Congressinally dictated production requirements each fiscal year. Often, if the all examiners worked a nominal number of examining hours a year and and all performed at 100% there would be a short fall, so management often uses management tools such as "incentives" to achieve over 100% including bonuses, overtime (which is paid, albeit capped, but adds to the examining hours for the production calculation) or just plain coersion ("Anyone not doing 110% this quarter will be required to explain to the group director why this was not done").
So there is no explicit requirement that a certain precentage of the "Disposals" be allowances; however, if the production is low, meaning below 100.0%, or even more if the managers are trying to squeeze out more, then that employee, even if above 95% will possible start being harassed, and if they have a lot of abandonments (usually meaning they beat down applicants) relative to allowances, or lots of appeals, then they will be pressured to allow more cases because their standards are too high, or their boss will start criticizing their rejects as incorrect, etc.
The place is a snake pit, and it has getten even worse since I left 12 years ago.
This is absolutely true; it has become even worse since I left the place over 10 years ago. And it goes a bit further than just being in favor of granting patents as a matter of principle; I will just comment on one aspect of the issues raised in the parent.
Apart from the often discussed issues of patentability of software patents, and, indeed, the whole issue of whether all intellectual property is proper, there is a significant institutional culture issue that has a strong influence on how the Office functions that took root several decades ago and has, regretfully, increased, monotonically, over time. The management attitude, in a nutshell, is that patents aren't "examined", they are "processed". The examination process is driven by production "goals"; to be rated in the key rating category of "Production Goal Achievement" as "fully successful" you must have at least 95%; less than that you are marginal; less then 90% you are "unsatisfactory", meaning your entire rating is "unsatisfactory" meaning a "90 day letter" to get it "fully successful" else you are fired. Also there are other time related requirements to meet, such as no amended application pending more than two months without an action. Persons get fired (yes, this does happen) almost always for low production or exceeding time limits for actions, almost never for improperly allowing claims.
About the only time you ever get static for improper allowance is when the management doesn't like you (not a team player, being active in the union, etc.) but your "numbers" are all good, so then they will strain and try to misinterpret stuff to make a crappy rejection (which, BTW, is another way they can ding you, if, in their judgement, your own rejections are not "justified")
I can say, from my experience, that there have been good and consciencous folks, some real turkeys (but who produce > 100% all the time and don't make blatent errors; they are mangement pets and are often groomed as future managers, making the old management culture self perpetuating); the vast majority of the working stiffs want to do a good job, the the management culture is just totally antithetical to a good, healthy and balanced work environment.
This has been a design principal since at least 1930's (in the US, at least) when Centralized Traffic Control (tm) and remote control systems were developed. the low level "Field" equipment is designed to reject the display of other than a "stop" signal unless 1) No conflicting route has been set AND 2) all track "appliances" (switch points, movable bridges, etc.) are "lined and locked" in position. The request to clear a route, be it from a local operator using the old Victorian "armstrong" mechanical machine or the latest digital commands sent over almost any kind of telecommunications network to the field location will not succeed, barring failure of the field equipment.
Of course, if the communications network fails then the control of the railroad will fail (everything is at stop, or, at best, locked into a fixed pattern) which kills the railroad. Of course, there are manual procedures that can be followed, but, depending how much of the signaling system is left functional, can, at the least, be a huge burden to dispatch (and impossible if even radio contact is affected) and at worst, totally manual operation with the attendant safety risk.
Uhhh, well, that's the way it was prior to the 1980s and still mostly is.
You paid a filing fee, then, if allowed, you paid an issue fee. in the 1980's they added the concept of maintenace fees as new revenue stream that would also put a disincentive on non-revenue producing patents
See 35 USC 41
Patents: Useful arts, inventors, discoveries
Copyrights: Science, authors, writings