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Tuesday Jan 26, 2010

Thanks Patents Team -- Compact Prosecution is Working!!!

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos


For the entire Patent corps, I just wanted to let you know about the outpouring of "Thanks" I am hearing from practitioners and inventors all over the country.  Everywhere I go, and everywhere the other senior leaders of the Office go, we are hearing from applicants that they truly appreciate that examiners are reaching out to them, offering to help, engaging in a cooperative search for allowable subject matter, and most importantly getting down to business -- the business of finding the core issues with patent applications and resolving them.  Of course, this chorus of thanks goes to the examining corps.  So thanks – it’s working -- you are doing the right thing -- and the world is noticing!


By the way, I'm also hearing (sometimes the second sentence after the big "Thanks") that when examiners and applicants get on the phone, or get together for interviews, we are suggesting narrowing amendments and combinations of dependent subject matter into independent claims, such that the patented claims would be narrower than the ones originally presented by the applicant.  And to that I reply: "Please thank the examiner; she/he is doing precisely what they should be doing!"  Our mission is to advance the best interests of the innovation system, which means granting appropriate patents so that innovators can build businesses and create jobs -- but granting only what meets the statutory requirements, and no more.


I encourage our patent examiners to continue reaching out, and continue conducting interviews at any point in the examination process where an interview makes sense, whether it’s before the first action, after the final action, or after an RCE is filed.


Keep up the good work!


Dear Director, At times our patent prosecution has certainly been difficult.... Your leadership has given me new hope. I believe these changes will assist the hard working examiners as well as the inventor's. Thank-you.

Posted by BOBBIE GORE on January 29, 2010 at 04:30 PM EST #

Director Kappos, Congress has previously diverted ~$752M from the USPTO, which is roughly equal to the applicant fees paid for the queued applications. I suggest that Congress immediately replace the ~$752M (plus interest), say ~1.2B, previously diverted and establish an escrow model for queued applications. Establish flexible funding at the USPTO, so that as the backlog/queue is reduced, the corresponding escrow fees become available for the patent office to use.  An escrow model would a) prevent future fee diversion by Congress; b) act as a rate smoothing buffer so that patent office funding is insulated from short term variations in new application filings and c) allow the queue can be reduced ASAP. Congress could use stimulus money to immediately fund the USPTO escrow funding model ... without waiting for resolution of any patent reform legislation. The politicians can use the publicity.

Posted by inventor-0875 on January 30, 2010 at 08:39 PM EST #

One aspect of the current fee strucutre seems to be unfair to applicants. If I file an application with 30 claims (3 independent) I will pay $52 per claim extra for 10 claims, or $520 extra. If the Examiner picks up the case and immediately enters a restriction requirement, I can't get those claim fees back, even though the Examiner will never act on the claims. Assume, for example, that the Examiner restricts out claims 21-30. I have paid $520 to have these claims examined, but the Examiner has refused to do so. In that event, it would seem that the USPTO should be required to refund the extra claim fees, or at least most of the extra claim fees. Alternatively, if the applicant then files a divisional application, it would seem fair to reduce the cost of the divisional application by the amout of extra claim fees the applicant had already paid in the first case.

Posted by John Gorecki on February 02, 2010 at 09:51 AM EST #

In following up on John G.'s post, wouldn't it make sense for there to be some means of billing applicants for just the claims that are substantively examined? A way to do that would to be charge for the excess number of claims but to place that amount in an escrow. Once substantive examination (i.e., beyond any restriction) begins, the appropriate excess claim fee could be assessed and any remainder returned to applicant.

Posted by Jeff Knapp on February 07, 2010 at 06:53 AM EST #

Dear Director Kappos, I concur with the above comment re fee structure. Anything that can be done to encourage examiners to identify patentable subject matter would help, but this is difficult with the decreasing experience level of examiners. I believe you are encouraging SPE's to do more mentoring and supervision, which could help. Also, the Pre-Appeal Brief Conference is a good concept, except that the Conference participants can simply check a box and send the appeal to the Board if they do not see something drastically wrong with the Examiner's actions. Some feedback could be helpful, even if the claims are deemed suitable for appeal. The objectives of getting applicants and examiners to reach consensus or define issues sooner rather than later could be advanced by encouraging more interviews, particularly personal. Examiners shoud be encouraged to grant interviews when feasible, rather than only at their convenience.

Posted by James K. Poole, Esq. on February 07, 2010 at 11:28 AM EST #

The compact prosecution principle may be operating for regular examination, but my recent experience is that it is ignored during reissue applications. I'm currently prosecuting a reissue application that was filed September 14, 2001. No office actions have been issued, despite the fact that reissue applications are supposed to be treated as "special" (MPEP 1442). In this particular situation, the USPTO lost the file for the patent being reissued. They asked me for the file in 2008, and I sent it to them. They asked me again for the file in 2010, and I sent it to them again. I hope to receive an office action soon.

Posted by Sabra-Anne Truesdale on March 04, 2010 at 10:30 AM EST #

Director Kappos, You acknowledge the explosive growth in reexaminations, but has the USPTO given sufficient consideration to why that is so? IMO, it is an inexpensive way for infringers to tie up court proceedings. Infringers know that almost any request for reexam will be granted, placing a burden on the patent owner. The cost to the infringer is peanuts, but given the length of time reexams can take, the infringer can put off finality of litigation for several years. That puts any small entity patent owner at a financial disadvantage by essentially bringing licensing to a hault. This creates undue pressure on the patent owner to settle litigation for much less, but does nothing to exedite the reexamination process. The present reexamination system is working on behalf of all the patent infringers and against the patent owners. I doubt this is what was envisioned when the Patent Office was formed. The reexamination process needs to be made fair, and the life of the patent extended for the period of time it is being reexamined.

Posted by Edward Augustine on June 17, 2010 at 11:13 AM EDT #

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