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 - 12:23:01
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