Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), testified in an oversight hearing held by the House Judiciary Committee’s Subcommittee on Courts, the Internet and Intellectual Property.

Among the topics addressed in the testimony were patent and trademark quality and timeliness; hiring, retention and work-life offerings such as the USPTO’s telework program; global policy and enforcement initiatives; and the pending patent modernization legislation. The testimony was to address developments and successes since the last USPTO House oversight hearing in 2005.

Dudas’ testimony was meant to highlight the USPTO’s “record-breaking performance” for the last two years. Oh, really?

Granted, this is a large corporate entity given it has 8,500 employees and almost $2.1 billion in fee revenues.  Dudas said the USPTO hired 1,215 patent examiners in FY 2007 and intends to hire an additional 1,200 patent examiners each year through 2013 and expand the telework program (we’re all for these efforts).

On the downside, Dudas (proudly?) highlighted the fact that the allowance rate for patents is currently 44%.  This is in contrast to allowance rates in excess of 70% just eight years ago. Bear in mind that patent examiners reviewed over 362,000 patent applications in 2007, the largest number ever.

So, does this mean that quality is up or that frivolous rejections are soaring?  Did patent applications really get that much worse in just a few years?

Also, the percentage of Board of Patent Appeals decisions in which the examiner is affirmed or affirmed in part has increased from 51% to 69%. Finally, since the pre-appeal brief program was established in midyear 2005, the percentage of applications reviewed under the program in which the examiners action is deemed correct has increased from 45% to 56%.

Dudas mentions that the Office of Patent Quality Assurance (OPQA) has “implemented targeted reviews of examination processes or functions that are perceived to potentially be problematic trends” whatever that means — the areas of final rejection practice, Request for Continued Examination (RCE) practice, search quality and restriction practice were identified for review during FY 07.

Not surprising, Dudas is tickled pink that the current version of the patent reform bill include provisions pertaining to applicant quality submissions (AQS) basically shifting the burden of the USPTO’s job onto the applicants themselves.

The USPTO is touting its many initiatives to lessen their workload, which include:

1. Accelerated Examination

The USPTO has established procedures setting forth requirements for patent applicants who want, within 12 months, a final decision by the examiner on whether their application for a patent will be granted or denied. To be eligible for “accelerated examination,” applicants who file under this procedure are required to provide specific information so that invalidity of any ultimately issued patent can be completed rapidly and accurately by any attacking competitor crying inequitable conduct.

2. Peer Review Pilot

The USPTO is still trying to push its Peer Review Pilot project that gives so-called technical experts in computer technology the opportunity to submit annoying and irrelevant technical references before an examiner reviews it.

3. Markush Claims

Earlier, USPTO proposed new rules in the Federal Register that will allow an examiner to split one Markush claim into lots and lots of individual claims as distinct inventions so that one application can be turned into dozens, thereby lending credence to the claim that the USPTO gets too many applications.

4. Information Disclosure Statements

We’ve already discussed the stupid USPTO proposed rule changes to information disclosure statement (IDS) requirements and other related matters to improve the quality and efficiency of the examination process. The proposed changes will enable the examiner to require that the applicant make damning statements against themselves so that any ultimately issued patent can be completed rapidly and accurately by any attacking competitor crying inequitable conduct (also see No. 1 above).

5. Open Source as Prior Art

The USPTO is consulting with the Open Source community regarding the potential development of a tagging process and interface to enable examiners access to open source software repositories as a source of prior art.

6. Electronic Filing and Processing

The USPTO continues to promote electronic filing and processing of patent applications as a means of reducing paper-based inefficiencies. Now, if someone could just explain to me why a $2.1 billion dollar entity trying to move to a web-based system still gives me an error message so often.

7. Central Reexamination Unit (CRU)

Reexamination cases are now assigned to a Central Reexamination Unit (CRU). The goal of the CRU is to close prosecution on all ex-parte reexaminations within two years of filing.

8. Pre-Appeal Conferences

The USPTO announced that patent applicants can request a pre-appeal brief conference and learn its results before nothing happens and the applicant has to go ahead with incurring the costs of drafting and filing an appeal brief. This change is expected to cause more work for applicants.

9. Pre-First Office Action Interview and First Action Interview

The pre-first Office action interview with the applicant or his/her designated legal representative is designed to discuss potential prior art rejections and possibly resolve many or all issues with respect to patentability. Under a pilot program, the first action interview, upon request, prior to the first Office action on the merits where the examiner will conduct a prior art search and provide applicant with a condensed pre-interview Office action. If done fairly, this has a lot of potential to streamline prosecution, a system whereby applicants would otherwise be forced into a final office action.

Not surprising, Dudas is tickled pink that the current version of the patent reform bill include provisions pertaining to applicant quality submissions (AQS), basically shifting the burden of the USPTO’s job onto the applicants themselves.

Anticipate This! wonders what ever happened to an inventors right to a patent.

See all the fun here.

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  1. […] Patent Baristas placed an interesting blog post on Patent Office Director: Patent Allowances Down, Hoorah!Here’s a brief overview […]

  2. Pirates in the U.S

    The U.S Patent and Trademark Office, USPTO, has been believed to engage in the counterfeit patent.

    1. The First Patent for Puzzle Applied in Korea
    The sudden financial crisis of Korea made it difficult for me to find a job, so I had no choice but to walk on the street, thinking what I had to do. However, no matter how hard I thought about it, I had no idea to address such circumstance facing me. All of the sudden, I hit an idea which I had learned from a lecture given by an inventor when I was a child. He said that we all needed to think how to invent something out of a brick. I began to reflect on my memories and they were reflected in bricks of streets that I walked on. Then, I hit an idea, ‘Would it be a good idea if I made a picture puzzle from such bricks?’ At that same time, I thought that if I made it with simple triangular, rectangular or hexagonal bricks, there would be no fun at all.
    In addition, I imagined that children played together, jumping across lines drawn on bricks. By doing so, I tried to make a puzzle in which bricks were connected. The problem was that a shape of chains should be specialized to make bricks attach, detach and move around one other. After having conducted several researches to make it happen, I finally developed a structure of triangular, rectangular or hexagonal brick chains.
    On March 21, 2001, I applied for a patent on my idea to the Korean Intellectual Property Office for the first time.

    2. Contract with OOO Company
    Since I did not have any financial resource to apply for a patent abroad, or develop puzzle products or build a new company, I soon started to look for domestic and overseas firms which might show their interest in my puzzle. To this end, I did web searching, directly visited companies at home and consulted them. As a result, I signed a contract with a U.S company, OOO Company, but a contract condition was not satisfactory due to a lack of asset. Since I had contacted OOO Company, 10 month has passed until the contract was completely concluded. Therefore, in that process, I had applied for the PCT patent at my own expense and then had turned over all the rights for patent and sales to OOO Company. That means that OOO Company became obligated to apply for the patent on my puzzle overseas, produce products and sell them on behalf of me.

    3. Process for Prototype Puzzle Products and Application for a Patent in the U.S
    The president of OOO Company continuously sent me emails through which he said he would develop products and display them in toy fairs as soon as possible. Unlike his promises, the pace of work was too slow from a point when the contract was forged. I had a bickering with him given that he often lied to me that such project would be quickly implemented. OOO Company applied for a patent on my puzzle only in the States at a time when the PCT patent was expired. Since then, in February 2004, OOO Company showcased a sample of the products at the New York Toy Fair. Since the contract was concluded, it was so hard and time consuming to showcase samples of my puzzle due mainly to the dishonest president. Samples were not put on a test until 2 years had passed. Until then, I rejected several job offers which had been given to me in a difficult situation to find a job and thought that I should give other people a chance to work as a regular worker. Meanwhile, I was doing part-time jobs and adding further ideas to the initial one. All of that resulted from a lie of the president. Under such circumstances, my puzzle product appeared to yield a fruitful outcome at the Fair. Considering the contract forged with a renowned Japanese puzzle company, the result was somewhat satisfactory.

    4. Patent Found in the U.S
    Despite a success at the New York Toy Fair in 2004, Steven Wong, a U.S patent administrator, refused to accept my claim to the puzzle in the U.S. on June 24 in 2004. The reason was that Lynn Spitzer, a patentee of puzzle, had applied for a patent similar to mine in the U.S. earlier than I did, and that all of my claims could infringe on the patent owned by Lynn Spitzer.
    Patent No: US 6,536,764 B1 Date Of Patent: Mar. 25, 2003 Inventor: Lynn Spitzer, Philadelphia, PA(US) Assignee: The Toy Hatchery, Inc., Philadelphia, PA(US)
    Appl.No:09/496,483 Filed: Feb. 2, 2000 Primary Examiner -Steven Wong
    Attorney, Agent, or Firm- Grimes & Battersby, LLP

    5. The Forceful Demand of OOO Company
    The president said that Spitzer’s patent was applied in the States one year earlier than mine in Korea and it was so similar to my patent that mine was no longer valuable for another application. Consequently, he forced me to make a contract which would be absolutely unfavorable for me. I responded to his claim by demanding that since the U.S patent administration considered a similar patent as a technology if it had even a little difference, he should revive my patent and negotiate with Lynn Spitzer, or he should terminate my U.S patent after making compromise with Spitzer by insisting on technological difference of my patent. However, the president reiterated that my patent did not have specialty more than Spitzer’s. He added that he would have permission from Spitzer if he wanted to sell products in the U.S. For these reasons, he said he would not spend unnecessary money. As a result, my U.S patent was expired after the correction period had passed. Unfortunately, I did not have enough money to revive the patent. To make matters worse, I gave OOO Company all of my rights and responsibility for the patent in conformity to the contract. Nonetheless, failing to enroll my patent in the U.S. did not mean that the contract between OOO Company and me was no longer valid. In accordance with the contract, when the last patent was expired, the contract became invalid. Of course, there was a condition that when OOO Company did not want to renew the contract, it could declare the termination of the contract, but since I had turned over my Korean patent to OOO Company, the contract continued to remain valid. Then, the president, however, gave me an irrational document for contract renewal. According to it, the loyalty for my puzzle would be cut in half, contract might be expired whenever the president wanted and my products would not sell in the U.S. Additionally, he said only if I signed on for the contract, he would negotiate with Spitzer. I did not want to agree on the contract suggested by him. It was because OOO Company had already terminated my patent and did not faithfully engage in the application for my puzzle in other countries, so if OOO Company had declared the expiration of the contract, there would have been no way for me to receive the loyalty in accordance with such a contract. Furthermore, even if I had established a toy company, I would have been ineligible to sell products in the States. He did not deliberate on my situation, but consistently called on me to sign on for the contract renewal.

    6. The Similar U.S. Patent Proved Faked
    Since then, I sent Lynn Spitzer a great deal of emails. At first, she told me she was on vacation. Afterward, she sent me an e-mail through which she said she was not interested in OOO Company and me. Nevertheless, I emailed her in a bid to persuade her as often as I could. But, she replied “I got some plans,” warning of infringement on her patent. If I counted the number of email sent to her, it might be over 1,000.
    Increasingly, I wonder if her patent would be faked.
    The first reason was that Spitzer had not done anything about her patent for 8 years. In order to make money, she should have produced goods or sold products by importing such goods from somewhere else, or had someone sell products to receive loyalty if a right for the patent had been expected to last for 20 years. Taking King Solomon’ judgment as a good example, I concluded that she was not attached to her patent and I confirmed that she was not a real patentee.
    The second reason was that although someone had received my call at Spitzer’s company, The Toy Hachery. LLC, she had never put me though to Spitzer. Considering her attitude to receive a call, she was not an employee for that company. She had just received a phone call for 2 years.
    The third reason was Spitzer said she would work with FarSight Innovations.LLC, but that company’s homepage had only one page. The owner of the domain was a database company, not a manufacturer. I had a strong belief that she was hiding something. Subsequently, I started to examine externally into what the Spitzer’s patent was and what the U.S. Patent and Trademark Office (USPTO) did. Finally, I found out something.
    For Americans who apply for a patent in the U.S., the file repository date (the repository is located in Virginia) comes before the issued date. Of course, a patentee’s address should be the U.S. one. From an application to a correction, a patent is not unveiled until it is stored at the repository in Virginia. There are some patents that can be belatedly stored. Usually, a patent goes public 2 to 3 years after the first application is completed.
    File Repository Date (=Location Date) > (ABOUT WITHIN 5 DAYS) > Issued Date = US Mark or US Address
    Foreigners must apply for a patent in their countries first and then apply to the U.S. When they do so, they must reveal a patent. Therefore, an issued date comes first. In many cases, after the patent administration office confirms that there is nothing wrong in a patent, it restores the patent at the Virginia-based repository.
    Issued Date > (ABOUT 0 MONTH ~ 2YEAR) > File Repository Date (=Location Date) = KR, JP, DE or other national Mark except US mark
    However, in spite of the fact that the Lynn Spitzer’s patent was publicized on March 25, 2003 (an issued date), it was stored on June 15, 2004 (a file repository date) and the address was registered in the U.S. Unlike other patents applied by Americans, her patent’s issued date came before the file repository date. Furthermore, it was put at the repository even after 15 months although Spitzer’s patent had been applied by an expensive patent agency and correction of the patent had taken place several times during a closed period.
    Why was Lynn Spitzer’s patent applied in reverse order? In order to use a fabricated date of application, Spitzer exploited the way foreigners apply for a patent in the U.S. It is because her patent did not exist in 2000 even though Spitzer insisted that her patent was issued for the first time at that time. Put it once again, although Spitzer was an American, for concoction, she took advantage of the way a patent of foreigners is applied in the States. That is why an issued date and a file repository were reversed and files were put at the repository 15 months later. How did she make a fabricated date despite the fact that serial numbers are set for each application document? To find an answer, I examined into application numbers. I confirmed, to my surprise, a lot of vacant application numbers. Why, on earth, does the U.S Patent and Trademark Office make vacant application numbers? Anyway, I obtained sufficient evidences that indicated she fabricated her patent.

    7. Response from the President of OOO Company
    I had not realized for 3 years that Spitzer’s patent was faked. During that period, the president continuously pushed me to sign on for an unreasonable contract while failing to take issue with Spitzer. Spitzer’s patent was about to prove to be faked 3 years after OOO Company found Spitzer’s patent. At that time, a lawyer from OOO Company sent her an email through which he said the company wanted to receive a license from her, but she rejected that offer. After I discovered that Spitzer’s patent was fabricated in 2007, I informed the president of it. According to the contract, he should legally respond to, along with me, an infringement on my patent if there is any. Instead, soon after he had been notified that Spitzer’s patent was faked, he terminated the contract. As a matter of fact, I had asked him to annul the contract, arguing that I would do this business on my own. However, no matter what reason, he wanted to continue the contract so that I could not do anything. Then, when there was the evidence to show that her patent was faked, he terminated the contract. Now, he has stepped down from the presidency.

    8. Talks to Lynn Spitzer on the Phone
    Although I sent the related information to the U.S agencies, they did not take up a positive attitude. They wanted me to give a chance to those associated with the fake patent for an apology and to settle the issue in a good way. Since I had notified many related agencies of the information, every patent agent at Grimes & Bettersby, LLP rejected my emails. Grimes & Bettersby was the company which took care of Spitzer’s patent as I mentioned earlier. Spitzer no longer insisted that she had some plans and just sent emails which she had previously written at her patent agency. In that email, just a few words were corrected. All she did was giving me a few of official answers. I sent her an email through which I said “You just lent your name. It was your patent agency and an examiner of USPTO who fabricated the patent.” I recognized that a patent agency was necessary to fabricate a patent, so I decided to take issue with Grimes & Bettersby on my own. There was a women employee who was in charge of taking a phone and patent agents there did not directly answer a phone. As indicated by telephone counselor, I recorded several voice messages. I asked her if she knew her company was an illegal one. She repeated ILLEGAL, a word I said to her, in order to understand my intention. Then, I talked about file repository date and asked her name. She murmured, “Spit…, Spit…” and she said her name was Spitzer. I became curious about her full name and I asked her if her name was Lynn Spitzer. She said, “Yes” and started to blubber. I was greatly surprised. She said that no one but her was there at office. I did not understand why such a tender-hearted woman was engaged in this matter. However, now, another person receives a phone and soon hangs up the phone. Considering her, I decided to settle this issue in a way to forgive all concerned, but she has yet to provide any solution as if an external pressure prohibits her to do so. Making an illegal patent requires a patent agent and an examiner at USPTO, let alone Lynn Spitzer. Although I tried to forgive them at first, I have made up my mind to file a lawsuit in a bid to find the truth as well as the reason that they have repeatedly avoided. After I wrestled against this adversity, so to speak, I have come to know there would many more fabricated patents in the U.S.

    9. Information for Support Fund to Assist a Lawsuit
    I made a decision for a transparent management for an intellectual property right in every nation.
    I hope that my lawsuit will prevent such a fabrication from reoccurring.
    Bank: Hana Bank in Korea. Depositor: June-ho Yang. Account Number: 365-810015-69907
    I highly recommend you to confirm whether there are problems on your patent applied in the U.S

    10. How to Contact

  3. I have an query? Why do US patents do not uise the term “prior art”? they either do not mention it or say background. Can you clarify?

  4. I have an query? Why do US patents not use the term “prior art”? they either do not mention it or say background. Can you clarify?

  5. madhura,

    There isn’t a prohibition on labeling references as “prior art” but applicants are afraid of making statements that appear to be an admission that the published article is prior art.

    Whether or not a previously published article is, in fact, prior art is a legal conclusion. Since there are a variety of reasons in which a reference is not prior art, e.g., the publication date is wrong, the reference does not disclose all of the elements of the present invention, the reference was published by the applicant and was less than a year before filing, etc., then it is often better to not state it as a fact.

    Most applicants prefer to just state that here is a previous reference offered for background purposes. If it is more, then the Examiner can decide that for him/herself.

    That’s my 2 cents.

  6. Dear Stephen,
    Thanx 4 your prompt ans. so you mean use of term ” prior art” is allowed in US for drafting cos I have hardly seen any patent with that teminology. In India, our patent law defines what is “prior art” but in US i think there is no such definition.Also one more ques. in US is it mandatory to include prior art in the specification? Can we just mention the closest prior art nos. and make a statement regarding the problem associated with the prior art processes?
    I appreciate your guidance.