Search the Archives           Subscribe           About this News Service           Reader Comments

Archived updates for Monday, October 15, 2007

Back to the Future for USPTO Productivity?

According to Just a Patent Examiner, "in 1976, the Office came up with the examiner production quotas that are still in place today. The quotas were designed to embody the amount of time that it should take a competent examiner to generate Office actions for an average application." So, naturally, he took a gander at the old Form PTO-1142 entitled Notification of Rejection(s) and/or Objection(s) for an Office Action, Circa 1976 (above):
If you are an examiner, you have to marvel at the simplicity of this form. The clean lines. Completely free of those pesky, extraneous non-essential details (well, that's what they thought in 1976...who am I to argue?). This is the entire statement of rejection and objection of a 1976 Office action. All of the rejections and objections. 101, 112, 102, 103, double patenting, all on this form. Think about the kind of production today's examiners could maintain filling out this form instead of writing out the kind of detailed action that is now required. If you are a practitioner, you might say to yourself "Wow! It would suck to have to answer Office actions like that...", or perhaps even "Wow! It sucked to have to answer Office actions like that..."

. . . I would love to be allowed to use this form. It would be a huge time saver.

According to just a few comments on the post:
  • This looks strikingly similar to UK and PCT examination reports. As a fairly new lawyer on the other side of the fence, I think this approach is just fine. I agree with the previous post that after taking out all of the boilerplate-type language, this is basically what's left anyway. It sure would be easier for me to review a single sheet than for me to read through pages of boilerplate to make sure that I'm not missing anything that actually matters to me. I think increasing efficiency would be much better served by this approach than by some of the requirements set forth in the new rules that will become effective next month. I believe the new rules are going to create additional burdens on examiners. These burdens won't be as extensive as the burden on applicants, but I honestly believe they will hurt efficiency.
  • I personally would prefer a return to the short form. As another poster commented, it is very similar to EPO practice. Everybody should read the EPC examiner guidelines for determining inventive step. They are about 3-4 pages long. They make chapter 2100 of the MPEP look needlessly complicated. Which it is.As for getting the examiner's interpretation of which elements in the reference correspond to the claimed elements, I'd rather not have that either. I generally find that when I challenge that interpretation, what I receive in response is either: 1) "Is so." or 2) "Okay, well I'll just call this element your whatchamacallit." It would be much easier for me to respond to a short form OA with, "Here's why nothing in the reference correponds to claimed feature X."
  • Actually, the analysis in the above-reproduced PTO-326 is actually more than what I have received in recent actions. Delete the reproduction of the claim language and the form paragraphs and what I'm usually left with is less than a page worth of "original" analysis and in many instances, no more than a paragraph. . . . Personally, I could care less how an examiner conveys the statement of rejection. However, I shouldn't be left guessing as to what elements in the prior art are being used to disclose the claimed elements and if necessary, an explanation as to how the examiner is interpreting certain claim language.
  • Don't forget that 75% was also "fully successful" back then instead of today's 95%.

Let them know know what you think here.

    (0)comment(s)     translate     More Updates     Send