I wasn't going to reply to the group since I don't want another 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 spec
of the searched patents (This is not a clearance search, just a big
patentability). 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
they 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
shortcuts!)
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
relevant art you found. Attorney puts the other references in a secondary
IDS with no analysis for submission.
Steps 2 and 3 can probably be ditched if the drafting attorney is very
familiar 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
redraft 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 search
is different than you. The person is a PTO examiner/reviewer who knows
EAST, 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
look 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
conversations with PTO employees). Take a look at the file wrapper of US
7419254 for 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 worth of work.
(Of course with Dialog that is still $300!)
And you are correct about the 60 day reply. But the PTO will explicitly
spell 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 least 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
terrible, 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 at a
large company. For me, the AE search ends up being 2 to 4 times the size 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
Accelerated Examinations.
Prior art searching for AEs seems to be a moving target, initially a very
elusive target, lately perhaps more readily targetted. The PTO's
published search guidelines imposed an absurd burden on applicants,
requiring among other things a complete review of all claims of all patents
in all the likely fields of search US patent class/subclasses. Failing
that review, the search could be deemed insufficient, thus requiring the
applicant to correct the defective prior art search within 60 days or have
their case go abandoned without possibility of revival.
I presented an example of the likely labor burden imposed by the claims
review within the relevant class/subclasses at PIUG2008. I took a group of
significant patents assigned to my employer, identified how many patents
appeared in their fields of search class/subclasses, then estimated time to
review assuming 15 seconds/claim, 30 seconds/claim, or 1 minute/claim.
Assuming an average of 15 claims/patent, speedreading the claims would take
50 hours, 100 hours or 200 hours, the latter at 1 minute/claim reviewed.
That's just for one required component of a "sufficient" prior art search.
Does requiring applicants to spend more than 1 month/prior art search strike
anyone as burdensome?! Not according to Commissioner Dudas. Perhaps he
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
PTO, 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
worked on a couple dozen AE searches and many were for protecting specific
products 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
review team while doing AE searches and they have become much more realistic
and flexible with regard to the AE searches than they were at the beginning
of the program. Unfortunately, the review team has not convinced their
higher-ups to change the published templates and guidelines to reflect their
more 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
references 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 Assignee are better examples.
>From the joint AIPLA-PTO "Partners in Patenting" meeting on October 22nd, we
also learned that once an applicant gets past the gate keeping function of
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
9/30/08). It just requires a different style of claim drafting than the
popular "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 Annual
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 art
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 - 12:23:04
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