By Michael Borella --
The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings. While the USPTO has made incremental improvements in its examination practices and IT systems to streamline applicant workflows, there are a number of relatively small changes that it could employ to reduce applicant time and expense. Both substantive and procedural, these changes would clarify certain aspects of examination while eliminating redundant paperwork. The net outcome of these changes would be a reduction in cost for applicants -- namely, less time spent by patent attorneys, agents, and paralegals, leading to lower overall attorneys' fees.
The items below are not intended to be a comprehensive listing, and come with the caveat that there would be an upfront cost for the USPTO to make these changes. Nonetheless, the cost savings, when amortized over millions of transactions per year, are likely to be significant.
1. Explicitly provide the examiner's claim construction in Office actions
In order to evaluate an application's claims against the prior art and to determine whether they comply with other requirements (e.g., written description, enablement, and patent eligibility), the examiner is required to construe the claims -- to assign a meaning and scope to claim terms.
Nonetheless, it is rare for an examiner to provide their claim construction in an initial office action. In many cases, the first opportunity that the applicant has to learn of the examiner's construction is in an interview or in a subsequent Office action.
This results in applicants and examiners talking past each other in office actions and responses. All too often, the examiner has one construction in mind, and the applicant has another. Until these parties at least become aware of the other's thinking, it may be difficult to progress the application. In many examples, one or two Office action cycles could have been eliminated if the examiner's claim construction was readily available from the outset.
Therefore, each Office action should have a dedicated section in which the examiner provides a construction for any non-trivial claim terms to which the examiner is applying an interpretation beyond those terms' plain and ordinary meaning. It should be recommended that the examiner construe all claim terms if possible, as doing so can only help accelerate prosecution.
In turn, the applicant would have an opportunity to, on a term-by-term basis, either accept the examiner's construction or rebut the examiner's construction with one of its own. But at the very least, the applicant would have a better understanding of why the examiner finds certain prior art references to be relevant to the claims.
As they say, you cannot have a meaningful debate with someone unless you can agree on a common set of facts.
2. Use claim charts to apply the prior art to claim elements
Current USPTO Office actions reject claims based on a narrative from the examiner. These narratives are typically in paragraph form, providing a claim element, citations to sections of prior art references that are purportedly relevant to the element, and any further reasoning from the examiner.
This narrative form can be confusing to follow in the best of cases, as sometimes the examiner's reasoning is unclear or ambiguous. But where it really breaks down is when the examiner uses two or more references against the same claim element. Discussion of these references might be split across several different parts of the Office action, making it difficult for the applicant to grasp the examiner's logic. Also, it is not uncommon for the application of the references to various parts of the claim element to be imprecise.
As an example, consider the claim element, "sorting the list of words in reverse alphabetical order." Suppose that the examiner has concluded that disclosure within the Smith and Jones references render the element obvious. In a traditional Office action, the examiner might write:
Smith discloses sorting a list of numbers in ascending order (para. 55-56, "The array may be sorted in various ways, such as in order from lowest to highest").
[ Several paragraphs later . . .]
Jones discloses reverse ordering of data (Fig 12, para. 132, "It should be understand that orderings of these elements can be ascending or descending.").
[ Several paragraphs later . . .]
Smith and Jones fail to explicitly disclose sorting a list of words. However, one of ordinary skill in the art would understand that if numbers can be sorted in ascending or descending order, by analogy a list of words can also be sorted in alphabetical or reverse alphabetical order.
While the grounds of this example of examiner reasoning might be solid, the application of the references to the claim element requires that the applicant look in three different locations to understand the full extent of the examiner's position.
The same text appearing in a claim chart would be much more clear and concise. An example follows:
This format puts all discussion of each claim element in one place, reducing the amount of effort and guesswork that goes into attaining understanding of an examiner's position. Further, the claim chart format has the additional advantage of making it very easy to ensure that all claim elements are considered by the examiner. It is not unusual for examiners to unintentionally miss a claim element, especially when the claim is complicated. Also, this format prompts the examiner to provide their reasoning rather than just cite the prior art.
3. Allow applicants to send calendar invites to examiners and to use popular conferencing tools
Currently, setting up examiner interviews can be a bit of a hassle. The applicant needs to contact the examiner by phone, find a suitable time, and then prepare and send an interview agenda to the examiner. All this for a telephone interview. The USPTO supports video conferences with examiners, but only using WebEx and through a more onerous setup process.[1]
As we have learned in the last two-plus years of COVID, conferencing tools such as Teams and Zoom have become largely ubiquitous and are efficient and reliable ways of holding remote meetings. Further, they support very simple screen sharing capabilities. While it is understandable that some examiners might not have working camera setups, the applicant and examiner seeing each other is not required.[2] It can be very helpful to just share a view of the applicant's specification and drawings, and/or the prior art documents.
In an ideal scenario, the examiner's email address would be printed in each Office action. The applicant would then be able to send a Teams or Zoom calendar invite to the examiner. The examiner would have the right to accept the invitation, propose an alternative time, or decline the video conference and fall back on a telephone interview. During the call, screen sharing could be used to facilitate the discussion.
4. Stop asking applicants to provide information that the USPTO already has
There are numerous filings that applicants make from time to time that require that the applicant provide information to the USPTO that is already in an application's file wrapper, or is otherwise in USPTO databases.
Requests for corrected filing receipts typically require that the applicant provide copies of edits to be made to the application's filing receipt as well as its application data sheet (ADS). In some cases, these edits take the forms of manually adding text to a PDF document. For simple changes, such as adding or removing an inventor or correcting a clerical error, only a single form should be required. Likewise, any filing currently requiring a chain of title should not make the applicant inform the USPTO of the chain of title if it already exists in the application's file wrapper.
An even more onerous example is Information Disclosure Statement (IDS) forms that require that the applicant enter the patent number or application number, filing or publication date, and applicant or inventor of each cited US patent or application. Doing so for a lengthy IDS is very time-consuming and error prone.
Since the USPTO has all of this information, the applicant should be able to enter just the patent number or application number into a web-based interface and let the USPTO's system fill out the rest. Better yet, let the applicant put all of this information into a CSV or flat file and upload it to the USPTO's filing portal. The portal can automatically fill in the required information and/or flag any errors. Given that long IDSs can sometimes take several hours of paralegal and attorney time to complete and file, this change alone would go a long way toward making patent prosecution more affordable.
The USPTO's current web-based ADS form is an example of how the USPTO has the ability to auto-populate forms. The same should be done for as many forms as possible.
5. A few odd and ends
Finally, here are a few quick hits that round out the wish list.
The USPTO currently downsamples the resolution of drawings. Why? It is my understanding that the USPTO keeps the high-resolution versions somewhere for publication and printing purposes. So why use inferior versions in PAIR? In some cases, this can lead to objections to the drawings for lack of readability even though the submitted versions were readable. Given today's storage, processing, and networking capacity, the rationale for such downsampling seems moot.
In appeals to the PTAB, there should be no new grounds for rejection in the examiner's answer. Instead, if the examiner wishes to provide such new grounds, prosecution should be reopened and the examiner should do so in an Office action. This would motivate examiners to more thoroughly consider how to use the prior art against the claims. As an alternative, applicants could be given the opportunity to allow the appeal to continue to the PTAB when they wish to rebut the examiner's new grounds without reopening prosecution.
Finally, a very small nit. Get rid of the 150-word limit on abstracts. Since abstracts are usually just abridged versions of the broadest claim submitted, they do not serve much of a purpose anyhow. Increasing this limit to, say, 250 or 300 words would make the transfer of the broadest claim into prose less likely to cause omission of any of that claim's features.
[1] The USPTO touts its Automated Interview Request (AIR) form for requesting interviews without first calling the examiner, but I have found that examiners often do not notice these requests and you end up having to follow it with a phone call anyway.
[2] The unwritten rule of video conferences these days is that no one should be forced to turn on their camera.
Regarding drawings, always file them as "non-black and white drawings", even if they're b/w and even if you're not going to petition and pay a fee for color drawings. That way, the PTO will save a copy of the originally filed drawings (I think in something called SCORE) that you'll be able to refer to later in case of discrepancy.
And you should poke around Carl Oppedahl's Ant-Like Persistence Blog, and join his listservs, for lots of discussion on this type of stuff. For example, a bunch of us signed on to a letter that Carl submitted last week to Andrew Faile at the PTO about the ill-considered .docx proposal. https://blog.oppedahl.com/?p=8218. I don't know if anyone from MBHB signed on.
Posted by: Dan Feigelson | June 13, 2022 at 04:54 AM
Dan,
Thanks for the note. I was not aware of the letter and probably would have signed on. One thing that stands out is this statement:
"To date, the USPTO has not received notifications of any issues resulting from the filing of applications in DOCX format." The date of that statement is a Federal Register notice of August, 2020.
However, I wrote this article in January, 2020 identifying several reproducible errors in the USPTO's DOCX intake system:
https://www.patentdocs.org/2020/01/uspto-support-for-filing-in-docx-format-still-a-work-in-progress.html
After that article was published, USPTO reps called me and asked for help debugging their system. I provided an example file that triggered errors and a few days later the reps confirmed that they saw the errors as well and were working on a fix. That was the last that I heard.
Clearly, the left and right hands are not in communication.
Posted by: Michael Borella | June 13, 2022 at 08:20 AM
Excellent suggestions Mr. Feigelson - with a possible exception (your mileage may vary) with any fee arrangement or similar expectations from clients.
Posted by: skeptical | June 13, 2022 at 08:39 AM
The PTO no longer uses WebEx. It's now Microsoft Teams. Zoom will never happen since the government has largely banned its use (as have many corporations). Practitioners can also request an interview using the "Automated Interview Request" form, and don't need to try to chase down an examiner by phone.
Having the examiner provide claim construction (and thus BRI) for everything is a waste of their time. Assuming that they're doing their job, ALL of the interpretations is supposed to be the "plain meaning" as long as no special definition is provided. Unless the practitioner is awful at their jobs, they should be aware of what the plain meaning of the terms they've used would be.
Posted by: CJ | June 13, 2022 at 08:59 AM
CJ,
Thanks for the update regarding Teams. Looks like the USPTO switched over recently and that is a step forward.
I have to disagree, however, regarding claim construction. I have had too many experiences where an examiner did not apply BRI correctly and provided no indication of their proposed construction. Thus, their use of the prior art made no sense.
During an interview, the examiner then gives their construction but it is contradicted by the language and context of the claim itself as well as how the claim terms are defined and used in the specification. This is just wrong and wastes everyone's time.
Mike
Posted by: Michael Borella | June 13, 2022 at 09:34 AM
The claim charts idea is worth all the others put together. I will add that one to my useless list of “if I were named Director…” initiatives.
Posted by: Greg DeLassus | June 13, 2022 at 10:57 AM
CJ,
I am curious as to what informs your perspective.
If I were to hazard a guess, I would think that you are an examiner, and thus your perspective is one of guarding the time allotment that you have per count.
This may also explain that you do not see what most all of us practitioners see: rather than BRI (or even a basic application of what may constitute the factual underpinnings to the Graham Factors in any composed rejection), we see a preponderance of "key word" citations of prior art strung together merely because a word is used in the cited reference, and the examiner can string the references together in an obvious [sic] hindsight reconstruction of the claims -- regardless of what may or may not be -- in fact -- a reasonable broadest interpretation.
Us practitioners have coined this BUI (or Broadest Unreasonable Interpretation). Plain meaning is NOT "ANY" meaning, and claims MUST BE read in light of the specification.
It is critical to remember that we often have clients who direct us to write applications based on the understanding of the clients -- and that may not include your views of what terms may or may not include. This will (without a doubt) introduce variances in the meanings of terms, and thus (whether you like it or not) dictate that you must spend the time to understand the terms used BY reading and understanding the context of the application itself.
Yes, this will mean that your guarding your time may in fact BE inappropriate, as my clients do NOT spend their money (and have their expectations of what it means to have their application FULLY examined) based on the INTERNAL metrics of how you as an examiner may be measured.
Posted by: skeptical | June 13, 2022 at 12:46 PM
@CJ
You might be interested or amused by my posting on hindsight bias:
https://www.ipwatchdog.com/2021/11/24/hindsight-bias-ovine-survey/id=140378/
I am told that owing to change of accent with region, the relevance of baa code is not apparent throughout the US. But if you live in a region where baa sounds sheepish and try my question on a range of people you will almost certainly find that the answer is not obvious in foresight, although it is clearly obvious in hindsight.
Posted by: Paul Cole | June 14, 2022 at 04:00 AM
The 150 "limit" on abstracts is only a suggestion anyway.
Posted by: kotodama | June 15, 2022 at 08:09 AM
Fresh case - and near the bottom of page 7 is especially pertinent:
https://cafc.uscourts.gov/opinions-orders/21-1969.OPINION.6-13-2022_1964183.pdf
Posted by: skeptical | June 15, 2022 at 03:31 PM
Kotodama:
See MPEP 608.01(b), "The abstract in an application filed under 35 U.S.C. 111 may not exceed 150 words in length."
Mike
Posted by: Michael Borella | June 17, 2022 at 07:33 AM
Dr. Borella, thanks for that quotation. I think you may be looking at an obsolete MPEP revision.
The latest revision states as follows:
"The abstract should be ... *preferably* within the range of 50 to 150 words in length." (emphasis added)
https://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e44136
As you can see, the above language follows directly from the cited regulation, 37 CFR 1.72 ("The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length.").
In turn, the corresponding amendment to 37 CFR 1.72 was made in 2013. See https://www.govinfo.gov/content/pkg/FR-2013-10-21/pdf/2013-24471.pdf#page=36.
TGIF/Happy Father's Day!
-kd
Posted by: kotodama | June 17, 2022 at 11:43 AM
I have definitely received spec objections directing me to shrink the abstract when it exceeds 150 words.
Posted by: Greg DeLassus | June 17, 2022 at 01:04 PM
Good catch. When I googled "MPEP abstract" I was shown the 2010 version of the MPEP even though the header of the site implied that it was the 2019 version. Apparently the word "preferably" was added in 2015.
But Greg is right, I have received objections to abstracts over 150 words even after 2015.
Posted by: Michael Borella | June 17, 2022 at 04:02 PM
Examiners can still object despite it being just a suggestion, certainly. That doesn't mean applicants are 100% required to follow the suggestion though.
-kd
Posted by: kotodama | June 17, 2022 at 06:18 PM
I have received the opposite - an objection that the Abstract was less than 50 words.
I traversed, but the examiner insisted.
We had fun explaining that one to the client.
Posted by: skeptical | June 18, 2022 at 10:06 AM
"That doesn't mean applicants are 100% required to follow the suggestion though."
I agree that they are not "100% required" to comply, but that is a battle that is *never* worth fighting. It is *always* more cost effective to make the amendment than to fight it. Therefore, Mr. Borella's is right that it would be an improvement to overall practice if the 150 word limit were excised from the MPEP altogether, not merely modified to a softer tone.
Posted by: Greg DeLassus | June 18, 2022 at 06:40 PM