Thank you, Dominic!
This is one of the most informative nutshell posts that I have seen in a lo=
ng time. I hope that the PIUG combs through it constructively and that Tom =
puts the results in the Wiki.
Alan
_____
From: Dominic DeMarco [mailto:demarco_at_demarcoip.com]
Sent: Thursday, November 20, 2008 5:34 AM
To: PIUG Discussion List @ Listbox
Subject: RE: [PIUG List] USPTO Report and AE Info
I wasn’t going to reply to the group since I don’t want ano=
ther 37 read-receipts, but I figured out how to avoid that and somebody has=
to disagree with Roy and get him all riled up.
My understanding of the requirements requires no review of patent claims in=
the prior art during the search in any way shape or form by the searcher. =
The searcher shouldn't care about the claims, only about what's in the spe=
c of the searched patents (This is not a clearance search, just a big paten=
tability). The support document which is done post-search involves careful=
claim analysis, but that's a very separate step. So the steps in my book =
are:
1) Inventor invents!
2) Attorney gives you a patentability search.
3) You (the searcher) do a patentability search.
4) Attorney drafts claims that cover the specifics of the invention that th=
ey think will be allowed based on the prior art you found in #3.
5) Now you do an AE search against the drafted claims. (Class/subclass, key=
word, proper Boolean usage, NPL, etc. with full documentation. No shortcu=
ts!)
6) Provide the attorney with two sets of references, particularly relevant =
and others.
7) Attorney does claim tables for his/her claims versus the particularly re=
levant art you found. Attorney puts the other references in a secondary ID=
S with no analysis for submission.
Steps 2 and 3 can probably be ditched if the drafting attorney is very fami=
liar with the art (in house). For outside counsel that doesn't specialize,=
they probably should not be skipped.
Step 5 should be halted if you find strong 102 art so the attorney can redr=
aft and yell at you for missing it during step 3. 103 art is all you want =
to find.
And here is an important thing to remember: The person reviewing this searc=
h is different than you. The person is a PTO examiner/reviewer who knows E=
AST, classification and key words. They do not know other databases or NPL=
searching very well (Rahan, this comment is for you!). They want you to l=
ook at the best NPL sources, but not necessarily all of the ones listed in =
the template for your art (that is an off the record view from my conversat=
ions with PTO employees). Take a look at the file wrapper of US 7419254 fo=
r an example of this.
Aside: The classification search in ‘254 is still a ridiculous 15,=
000 references and the key word search is sketchy since the number of hits =
generated and which queries are actually reviewed is not noted (But the PTO=
doesn’t ask for it. Personally, I put this information in a second=
document for the attorney.), but the NPL searching is about 30 minutes wor=
th of work. (Of course with Dialog that is still $300!)
And you are correct about the 60 day reply. But the PTO will explicitly sp=
ell out your search deficiencies for correction (do this subclass, add this=
key word, etc.) if your search was close. And as a searcher, you're the l=
east of the problems. The petition is much more likely to be rejected for =
inadequacies by the attorney than by you. Caveat: If your search was terri=
ble, they will just tell you to fix it without specific suggestions.
I also have a very different perspective than you Roy. I'm on the outside, =
brought in specifically to perform the search for end clients by law firms.=
I don't have to deal with any of the other aspects that you probably do a=
t a large company. For me, the AE search ends up being 2 to 4 times the si=
ze of a normal patentability search. Not excessively burdensome.
Dominic
......
Dominic M. DeMarco
direct: 703.623.4745
email: demarco_at_demarcoip.com
DeMarco Intellectual Property, LLC
www.demarcoip.com
-----Original Message-----
From: Zimmermann, Roy [mailto:roy.zimmermann_at_medtronic.com]
Sent: Wednesday, November 19, 2008 11:51 AM
To: PIUG Discussion List @ Listbox
Subject: RE: [PIUG List] USPTO Report and AE Info
Dominic, thanks for sharing your insights gleaned at the PTO regarding Acce=
lerated Examinations.
Prior art searching for AEs seems to be a moving target, initially a very e=
lusive target, lately perhaps more readily targetted. The PTO's publishe=
d search guidelines imposed an absurd burden on applicants, requiring among=
other things a complete review of all claims of all patents in all the lik=
ely fields of search US patent class/subclasses. Failing that review, t=
he search could be deemed insufficient, thus requiring the applicant to cor=
rect the defective prior art search within 60 days or have their case go ab=
andoned without possibility of revival.
I presented an example of the likely labor burden imposed by the claims rev=
iew within the relevant class/subclasses at PIUG2008. I took a group of s=
ignificant patents assigned to my employer, identified how many patents app=
eared in their fields of search class/subclasses, then estimated time to re=
view assuming 15 seconds/claim, 30 seconds/claim, or 1 minute/claim. Assum=
ing an average of 15 claims/patent, speedreading the claims would take 50 h=
ours, 100 hours or 200 hours, the latter at 1 minute/claim reviewed. Th=
at's just for one required component of a "sufficient" prior art search. =
Does requiring applicants to spend more than 1 month/prior art search strik=
e anyone as burdensome?! Not according to Commissioner Dudas. Perhaps h=
e reads much faster than I, perhaps he has mastered transdermal learning.
Roy Zimmermann
Medtronic
-----Original Message-----
From: Dominic DeMarco [mailto:demarco_at_demarcoip.com]
Sent: Wednesday, November 19, 2008 8:35 AM
To: PIUG Discussion List @ Listbox
Subject: RE: [PIUG List] USPTO Report and AE Info
Roy et al.,
As one of the PIUG members who work here at the Public Search Room in the P=
TO, I've got a few more friends in the PTO than most members, and they say =
the PTO will not generate an easy way to monitor issuance of AE patents.
Don't know why at all. The only way I've found to locate them is by "short=
application to issuance time" which is not a good method at all.
Also, I agree with regard to "a harbinger of future litigation". I've work=
ed on a couple dozen AE searches and many were for protecting specific prod=
ucts being rolled out with an eye to competitors and litigation.
On a similar note, I've also spoken to a number of folks within the AE revi=
ew team while doing AE searches and they have become much more realistic an=
d flexible with regard to the AE searches than they were at the beginning o=
f the program. Unfortunately, the review team has not convinced their high=
er-ups to change the published templates and guidelines to reflect their mo=
re realistic approach. One quote I liked from a review team member was:
"Do not under any circumstances, use the first issued AE that Mr. Doll refe=
rences all the time as a template for how the search should be performed!" =
(US 7188939) That said; the more recent AE petitions from that particular A=
ssignee are better examples.
>From the joint AIPLA-PTO "Partners in Patenting" meeting on October 22nd, w=
e also learned that once an applicant gets past the gate keeping function o=
f qualifying for AE status, a far greater portion (956 applications as of
9/30/08) are granted than denied based on merit (176 applications as of 9/3=
0/08). It just requires a different style of claim drafting than the popul=
ar "you tell me what to restrict it to" style currently popular.
Dominic
......
Dominic M. DeMarco
direct: 703.623.4745
email: demarco_at_demarcoip.com
DeMarco Intellectual Property, LLC
www.demarcoip.com
-----Original Message-----
From: Zimmermann, Roy [mailto:roy.zimmermann_at_medtronic.com]
Sent: Tuesday, November 18, 2008 6:55 PM
To: PIUG Discussion List @ Listbox
Subject: [PIUG List] USPTO Releases Its Fiscal Year 2008 Report
For those of you tracking the performance and backlog at the PTO, the Annua=
l Report may be obtained at:
http://www.uspto.gov/web/offices/com/annual/2008/2008annualreport.pdf .
Note that the backlog of received patent applications, both in examiners ar=
t units and pre-examination processing, now exceeds 1,200,000 applications.
E-filing of new US patent applications has become the norm, with more than
70% of new applications filed in FY08 e-filed. The PTO processed a
record number of applications to either grant or final abandonment in FY08 =
as well.
Accelerated examination is touted by PTO management once again, yet proves
little. 1,276 accelerated examination applications were received in FY08
of more than 460,000! Have any patent database producers figured out a
means of tagging or flagging cases processed under Accelerated Examination?
Just as one often looks to Reexamination Requests as a harbinger of future =
litigation, so the Accelerated cases have a higher probability of assertion=
, so they would definitely be good to isolate for monitoring purposes.
Roy Zimmermann
Medtronic Inc
Principal Patent Information Specialist
763-505-2527 763-505-2530 (Fax)
roy.zimmermann_at_medtronic.com
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Received on Thu Nov 27 2008 - 12:23:07
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