RE: [PIUG List] USPTO Report and AE Info

The PTO's Guidelines for Examination Support Documents (ESD) may be found a=
t:

http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/esdguidelines09=
0607.pdf

Those guidelines detail what the applicants' prior art searches must encomp=
ass, what their post-search analysis of the documents identified during the=
 searches must contain, etc. Now while those Guidelines
apply strictly only to patent applications containing either more than 5 in=
dependent claims or more than 25 total claims, other PTO communications hav=
e indicated that the same or very similar guidelines apply to Accelerated E=
xamination Applications, Applicant Quality Submissions possibly to be requi=
red for any and all utility patent applications, etc.

Roy Zimmermann

________________________________
From: Rahan Uddin [mailto:rahanuddin_at_gmail.com]
Sent: Wednesday, November 19, 2008 11:40 AM
To: PIUG Discussion List @ Listbox
Subject: Re: [PIUG List] USPTO Report and AE Info

A slightly different perspective on this discussion, the PTO seemingly acce=
pts that patents contain all prior art, very untrue with so much informatio=
n floating around outside of patents, especially in rapidly evolving art ar=
eas...

Rahan Uddin
Peer to Patent

On Wed, Nov 19, 2008 at 11:50 AM, Zimmermann, Roy <roy.zimmermann_at_medtronic=
.com<mailto:roy.zimmermann_at_medtronic.com>> wrote:
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<mailto:demarco_at_demarcoi=
p.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<mailto:demarco_at_demarcoip.com>

DeMarco Intellectual Property, LLC
www.demarcoip.com<http://www.demarcoip.com>

-----Original Message-----
From: Zimmermann, Roy [mailto:roy.zimmermann_at_medtronic.com<mailto:roy.zimme=
rmann_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<mailto:roy.zimmermann_at_medtronic.com>




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Received on Thu Nov 27 2008 - 12:23:04