About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristant #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Enter your email address:

Delivered by FeedBurner

Contact the Docs

Docs on Twitter


Disclaimer

  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat_165
Juristat #8 Overall Rank

Pharma-50-transparent_216px_red

« An Analysis of the New Written Description Training Materials – Antisense | Main | Neuralstem Accusation Touches Nerve with StemCells »

May 13, 2008

Comments

Curious that Doll concedes that it is not the ESD but rather Examiner interview that helps speed things along in accelerated examination, yet, not one to be confused by facts, he clings to the belief that the AQS will be a panacea to reduce backlog. Sounds to me like an implicit admission that the proposed AQS has nothing to do with achieving quality and everything to do with raising the cost of obtaining a patent so high that many parties will forego seeking patent protection.

Dan-

I think the cost factor is a consideration, but I also think that PTO management truly believes that there are many applications being filed that either do not contain patentable subject matter, or that overclaim what is actually patentable. The problem is that even if that is the case, determining what's wheat and what's chaff is their job, one they are perfectly happy to shift to applicants.

Thanks for the comment.

Dan and Noon,

I can personally attest to the fact that many (90%+) of my applications have overclaimed what is patentable at least in the first set of claims or are not patentable at all.

"Curious that Doll concedes that it is not the ESD but rather Examiner interview that helps speed things along in accelerated examination, yet, not one to be confused by facts, he clings to the belief that the AQS will be a panacea to reduce backlog. Sounds to me like an implicit admission that the proposed AQS has nothing to do with achieving quality and everything to do with raising the cost of obtaining a patent so high that many parties will forego seeking patent protection. "

Let's be clear, "speeding things along" does not only equal having good art present at time of filing. The speeding of things along is achieved by compromises and quick conveyance of info about the app between the examiner and attorney iirc.

"determining what's wheat and what's chaff is their job,"

That's funny, I wasn't aware of any statutory requirement (or other requirement) for me to determine what is wheat and what is chaff. I am aware of a round about statutory requirement for me to determine what, in the most Current Set of Claims, is chaff. There is a difference, and I believe it would be to your credit to not forget that so that you can stop making outrageous assertations as to what our job is.

Just FYI, it is your responsibility to determine what you think is wheat. I'm merely there to see if I can prove that it's chaff.

In addition I would not like to transfer the finding of what is chaff to the applicant. Mainly because they would bonk it up even more often than I do based on what I see spewing forth regularly in Amendments.

If you don't believe me about the 90+% I invite you to join me for coffee one day at Starbucks and I will hand deliver you a copy of the front page of each of the apps on my docket and you can look them up when you get home and see the overclaims. I can be found regularly on PO, though your site is so good about the information (biased as you attempt to make it) it provides I'll be checking in from time to time.

Dear e6k:

The part of the statute that places the burden on the office is the part that says: A person is entitled to a patent unless . . .. Although I am sure that there are applicants who overclaim (probably because they don't know the full extent of the prior art), the goal on this side of the fence is to write a claim that is just on the patentable side of the art, with sufficient dependent claims to provide support for more limited scope in the event that the examiner finds art unknown to the applicant. Reasonable people may differ, but if applicants don't protect their inventions as vigorously as they can, a competitor will simply practice the invention in the interstices that they did not protect. (Maybe if we have that cup of coffee at Starbucks I can show you some examples of this kind of behavior).

I don't think our job is to throw everything against the wall and make you see what sticks, and that's why a prefile search is a good idea - I recommend it to all my clients.

The point that should not get lost is Commissioner Doll's statistic that the examiner interviews were the most productive part of the Accelerated Examination program, rather than the ESDs. As we discussed in a later post, that suggests that a modicum of cooperation, rather than conflict, between the office and applicants (and their counsel) might serve everybody - the public with high quality patents, the Office with a reduced backlog and applicants with patents that are less likely to be invalidated in court.

Thanks for the comment.

The summary states the PTO has seen a benefit from the pre-first office action interviews. The summary also states that the Office is stimulating Examiner retention by encouraging "hoteling" - requiring the Examiner to be at the PTO just once a month (and that, at present, it appears only by reason of a federal statute). My question - How am I to schedule an interview with the Examiner if s/he is only required to be at the PTO once a month? I am sure I won't be the only person (applicant/SPE/or other commitment) wanting the Examiner's attention on the one day that s/he is at the PTO. Has anyone else considered these basic logistics?

The comments to this entry are closed.

May 2019

Sun Mon Tue Wed Thu Fri Sat
      1 2 3 4
5 6 7 8 9 10 11
12 13 14 15 16 17 18
19 20 21 22 23 24 25
26 27 28 29 30 31