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[Retarius]

I have heard about the following situation, but have never experienced first hand until this morning:

An examiner in a pending case is getting ready to do their prior art search that begins initial examination.  The examiner wants me to tell her what the point of novelty of the invention is, and compare the invention to prior art I may have come across. Naturally, bells went off in my head! I recall Paul Gardner of PRG saying to never provide such information to an examiner as it may unfairlly hinder the applicant in prosecution. I certainly understand this, and don't intend to provide opinion information to an examiner that can be used against my clients invention.

The question I have is how to "properly" tell the examiner "no"? Any thoughts are appreciated.

Thanks,
Retarius

[Examinerguy]

Just request that none of what you say is on record. If the examiner agrees, then go ahead with it. The more you help out, the shorter prosecution will last. I can't tell you how many times it has taken me until an RCE to find out what the novel aspect of the invention is. The ones who are the most helpful get a patent, the ones who try to hide things do not (at least not in a timely manner). The inventive concept helps find a reference on day 1 instead of day 400 (when the RCE is being acted on).

[klaviernista]

The question I have is how to "properly" tell the examiner "no"? Any thoughts are appreciated.

Simply tell the examiner that the claims define that which the applicant considers his invention.

Nothing in the U.S. rules requires you to discuss or identify "points of novelty" or prior art that you considered with the examiner.  The only exception I'm aware of is the patent prosecution highway program, which is little used because it requires practitioners to make such statements.

The types of statements that the examiner is asking for can land a practitioner in hot water very quickly.  The risks far outweight the potential reward, IMO.  That is, unless, the practitioner has written permission from the client to make such statements to the examiner.

Even if a practioner is authorized to make such statements to an examiner, I would try to make those statements in an in person interview, and ask the examiner to draft the interview summary while I am in the office.  Why?  Because I would want to make 100% certain that nothing I said in that interview re: points of novelty or the prior art was contained in the interview summary.

[klaviernista]

Just request that none of what you say is on record. If the examiner agrees, then go ahead with it. The more you help out, the shorter prosecution will last. I can't tell you how many times it has taken me until an RCE to find out what the novel aspect of the invention is. The ones who are the most helpful get a patent, the ones who try to hide things do not (at least not in a timely manner). The inventive concept helps find a reference on day 1 instead of day 400 (when the RCE is being acted on).

While I am all for being cooperative with examiners, there are considerations in play that often dictate that an attorney cannot (or should not) cooperate with certain examiner requests.  This is clearly one of those situations. 

And for the record, I don't know of a single patent attorney that intentionally "hides" anything with respect to a patent application.  We submit claims to define the invention, and we submit information disclosure statements to identify prior art that is material to the patentability of the claimed invention.  Those two items provide exactly the information that an examiner is requesting when he asks the applicant's attorney to identify a point of novelty and discuss prior art that he/she considered when drafting the application.

In short, it is not the applicant's responsibility to do the examiner's job. 

I apologize if the preceding paragraphs are offensive to you or another examiner.  But they are my honest opinion.  And FWIW, in my 3.5 years as an examiner, I never once asked the applicant to identify a "point of novelty."  Sure, I asked attorneys to explain how their claim language distinguished a piece of prior art that I applied in an office action (common occurrence in interviews).  But ultimately, I recognized that the burden was on me (as an examiner) to establish a prima facie case of unpatentability BEFORE that discussion took place.

[patentatt]

Just request that none of what you say is on record. If the examiner agrees, then go ahead with it. The more you help out, the shorter prosecution will last. I can't tell you how many times it has taken me until an RCE to find out what the novel aspect of the invention is. The ones who are the most helpful get a patent, the ones who try to hide things do not (at least not in a timely manner). The inventive concept helps find a reference on day 1 instead of day 400 (when the RCE is being acted on).

While I am all for being cooperative with examiners, there are considerations in play that often dictate that an attorney cannot (or should not) cooperate with certain examiner requests.  This is clearly one of those situations. 

And for the record, I don't know of a single patent attorney that intentionally "hides" anything with respect to a patent application.  We submit claims to define the invention, and we submit information disclosure statements to identify prior art that is material to the patentability of the claimed invention.  Those two items provide exactly the information that an examiner is requesting when he asks the applicant's attorney to identify a point of novelty and discuss prior art that he/she considered when drafting the application.

In short, it is not the applicant's responsibility to do the examiner's job. 

I apologize if the preceding paragraphs are offensive to you or another examiner.  But they are my honest opinion.  And FWIW, in my 3.5 years as an examiner, I never once asked the applicant to identify a "point of novelty."  Sure, I asked attorneys to explain how their claim language distinguished a piece of prior art that I applied in an office action (common occurrence in interviews).  But ultimately, I recognized that the burden was on me (as an examiner) to establish a prima facie case of unpatentability BEFORE that discussion took place.

I completely agree with Klav.  Tell the Examiner that claims must be examined as a whole (MPEP 2141.02 I).  Also tell the Examiner that the claims are not written in Jepson format (if they are not).  If you wanted to admit what was prior art and limit your claims to a single point of novelty, you could have written your claims that way.  You didn't.  Last, ask the Examiner where the MPEP or CFR authorizes the Examiner to demand Applicant to point out the point of novelty (technically: point of novelty *and* nonobviousness).  Ask whether the Examiner's demand is "reasonably necessary to properly examine" the application under Rule 105.

I would also explain that the Examiner might have a difficult job, considering the time and resource constraints that the Examiner works under.  But the practitioner has a duty to zealously defend the client, and not to help the Examiner reject his or her claims.  Asking a practitioner what the point of novelty is like asking a criminal suspect to give up his right to remain silent.

Also: don't trust an Examiner's promise to keep things off the written record.  We put "FOR DISCUSSION PURPOSES'S ONLY - NOT TO BE PLACED ON THE WRITTEN RECORD" on each Interview Agenda that we send examiners.  About 1/15 show up in the IFW.

[ChrisWhewell]

I have heard about the following situation, but have never experienced first hand until this morning:

An examiner in a pending case is getting ready to do their prior art search that begins initial examination.  The examiner wants me to tell her what the point of novelty of the invention is, and compare the invention to prior art I may have come across. Naturally, bells went off in my head! I recall Paul Gardner of PRG saying to never provide such information to an examiner as it may unfairlly hinder the applicant in prosecution. I certainly understand this, and don't intend to provide opinion information to an examiner that can be used against my clients invention.

The question I have is how to "properly" tell the examiner "no"? Any thoughts are appreciated.

Thanks,
Retarius

I'd be inclined to reply that its the invention as a whole that I consider novel, but would probably ponder further before replying.  We generally avoid using Jepson-style claims for the same reason that I'd not be inclined to answer such question by an examiner, posed as you'd described.

[Retarius]

Klav/Pat/Chris - many thanks for the helpful replies. I will respond to the examiner using the points you brought up.

Thanks,
Ret

[Examinerguy]

I apologize if the preceding paragraphs are offensive to you or another examiner.  But they are my honest opinion.  And FWIW, in my 3.5 years as an examiner, I never once asked the applicant to identify a "point of novelty."  Sure, I asked attorneys to explain how their claim language distinguished a piece of prior art that I applied in an office action (common occurrence in interviews).  But ultimately, I recognized that the burden was on me (as an examiner) to establish a prima facie case of unpatentability BEFORE that discussion took place.

Not offensive at all. Of course it is our job to find prior art that reads on the claim without the aid of applicant; my statements were pertaining to the "time" that search takes. The more helpful the applicant is, the faster the examiner can find pertinent art. The art is out there regardless of you telling us a point of novelty or not...you are merely helping us find it on search #1 instead of search #4. Even if we don't find it on search #4, the patent is virtually worthless (or expensive to uphold) if the art is out there. Further, if the patent is worth anything, you can bet the public will find art and send it in for re-exam.

Therefore, going off the record to explain the novelty is completely acceptable, especially if applicant uses terms like "one novel example may be"...that way you aren't limiting yourself to one scope.  You wouldn't believe how difficult it is without specification support to find the point of novelty in a broad complex art.

[patentatt]

I apologize if the preceding paragraphs are offensive to you or another examiner.  But they are my honest opinion.  And FWIW, in my 3.5 years as an examiner, I never once asked the applicant to identify a "point of novelty."  Sure, I asked attorneys to explain how their claim language distinguished a piece of prior art that I applied in an office action (common occurrence in interviews).  But ultimately, I recognized that the burden was on me (as an examiner) to establish a prima facie case of unpatentability BEFORE that discussion took place.

Not offensive at all. Of course it is our job to find prior art that reads on the claim without the aid of applicant; my statements were pertaining to the "time" that search takes. The more helpful the applicant is, the faster the examiner can find pertinent art. The art is out there regardless of you telling us a point of novelty or not...you are merely helping us find it on search #1 instead of search #4. Even if we don't find it on search #4, the patent is virtually worthless (or expensive to uphold) if the art is out there. Further, if the patent is worth anything, you can bet the public will find art and send it in for re-exam.

Therefore, going off the record to explain the novelty is completely acceptable, especially if applicant uses terms like "one novel example may be"...that way you aren't limiting yourself to one scope.  You wouldn't believe how difficult it is without specification support to find the point of novelty in a broad complex art.

Why are examiners conducting so many searches?

MPEP 904 clearly states that the examiner should ordinarily do one comprehensive search and then, if the rejections are improper, allow the application (with perhaps a cursory search of intervening art).  Why do examiners assume that they will conduct search #2, search #3, or search #4, as you write above, if their first rejections don't stand up?  The claims haven't changed, so why do you need another search?  Honestly, I genuinely want to understand why this attitude has pervaded every corner of the examining corps.

It's not just you - virtually every examiner I have contact with these days has the attitude of: "yeah, your arguments beat my rejections, but I'm just going to conduct another search and apply new references that I could have applied earlier."  Indeed, examiners never seem to allow applications unless amendments are made.  Why is this the default assumptions among examiners?  Instead of assuming that you'll conduct FOUR different searches before allowing the case, in total violation of MPEP 904, why not assume that you'll conduct one comprehensive search, and then, if no rejections stand up, simply allow the application!

I especially don't understand this blatant violation of PTO policy because 1. examiners get a count for allowing an application - they get zero counts for writing a second non-final, and 2. counts are now front loaded, so that examiners get more fractional counts for the first OA than later OAs - creating incentives to conduct a first, single, comprehensive search.  Kappos revised the count system to incentivize examiners in exactly the direction that MPEP 904 suggests, and yet the entire examining corps utterly disregards it and assumes that searches will be conducted ad nauseum until the application is allowed for some arbitrary reason...

But I digress.

[klaviernista]

You wouldn't believe how difficult it is without specification support to find the point of novelty in a broad complex art.

To the contrary, I would believe it.  In fact, I know first hand how hard it is to perform a comprehensive patent search.  I was a patent examiner for many years before I decided to become a patent attorney.  One question that patentatt's posts bring up that is worth discussion is, "Is it the duty of a U.S. patent examiner to perform a comprehensive patent search?"

…my statements were pertaining to the "time" that search takes. The more helpful the applicant is, the faster the examiner can find pertinent art. The art is out there regardless of you telling us a point of novelty or not...you are merely helping us find it on search #1 instead of search #4.

Sure, the search takes time.  But that is (or is in theory) why applicants pay the USPTO search fees.  And there is a lot more at stake then you might realize if an applicant “helps” an examiner find pertinent art.  Indeed, some of the many questions that are raised are:
    1. If the applicant “helps” the examiner identify art, why wasn’t that art submitted in an IDS in the first place? (goes to a finding of inequitable conduct)
    2. If the applicant guides the examiner’s search, has he/she tainted the examiner’s objective inquiry into the patentability of the claims? (could undercut enforceability, go to a finding of inequitable conduct, etc.)
    3.  What if the applicant makes a mistake and identifies the “wrong” point of novelty to the examiner?
    4. What if the applicant doesn’t know the point of novelty?  (Happens more often then you might think)
    5.  if an applicant's representative identifies a point of novelty, but the claims are broader than that point of novelty, does a U.S. examiner have a duty, as a steward and representative of the U.S. puiblic, to ensure that the narrower representation made by the applicant's representive shows up in the record?  (I would argue that an examiner does have such a duty, which would eliminate "off the record" discussions entirely)

Even if we don't find it on search #4, the patent is virtually worthless (or expensive to uphold) if the art is out there. Further, if the patent is worth anything, you can bet the public will find art and send it in for re-exam.

Patents are expensive to enforce, regardless of whether an examiner does a good job or not.  And of course, it is generally in the applicant’s interest to obtain patent claims that are valid and enforceable.  But as my prior comments indicate, there is little benefit in the applicant assisting the examiner with his search, or helping the examiner come to a conclusion regarding patentability.  And you might be surprised to learn that a patent is not worthless, even though it might be difficult to enforce or invalid.

Therefore, going off the record to explain the novelty is completely acceptable, especially if applicant uses terms like "one novel example may be"...that way you aren't limiting yourself to one scope.

That might be one method of moving forward, but as noted in my prior post I would not do that unless I was in the examiner’s office, and everyone in the room agreed that certain discussions would be “off the record” AND the examiner agreed to let me edit the interview summary before it issued into the file wrapper.  And frankly, having to go through that process just stinks.  Literally.  It smacks of clandestine and illicit behavior. . . .  yet another reason why practitioner’s should not help an examiner do his/her job.
FWIW, there is a specific program set up if applicant’s want to accept the risks attendant with what you are suggesting, namely the Patent Prosecution Highway program.  But last I heard, that program was little used. . . . and for good reason.

[klaviernista]

Why are examiners conducting so many searches?

The answer(s) to this question are easy, though unsatisfying.  Examiners conduct many searches because: 1) USPTO policy (even current policy) does not provide them with enough time to do one comprehensive search; and 2) Claim amendments change how an examiner construes the claim language, which in turn can change which art an examiner feels is applicable to the claims.  The general thought process is that art which reads on broad claims might not read on narrower claims, but that does not mean the narrower claims are necessarily patentable.  Why?  Because there might be art that reads on the narrower claims, which the examiner did not apply because the breadth of the initial claims encouraged the application of the initial broad art.   

Also, I posted this a while back, but when I was an examiner, I had roughly 20 hours to handle one "round" of examination.  That means that I had 20 hours to:

-read the application
-construe the claims
-search the prior art
-filter through potentially thousands of hits to find the "most pertinent prior art"
-analyze the "most pertinent prior art"
-write a first office action
-field any calls from the applicant after the first OA
-consider the applicants response to NFOA
-make a determination as to whether my original argument was still tenable
-draft a final OA or notice of allowance

To put that in perspective, I spent roughly 200 hours last year performing a comprehensive patent landscape and FTO analysis for my current employer. . . . regarding ONE area of our technology.

[klaviernista]

Why do examiners assume that they will conduct search #2, search #3, or search #4, as you write above, if their first rejections don't stand up?  The claims haven't changed, so why do you need another search?  Honestly, I genuinely want to understand why this attitude has pervaded every corner of the examining corps.

One rationale that I have heard (and it is a good one), is that the USPTO is genuinely concerned with patent quality,  Thus, irrespective of what MPEP 904 may or may not say, examiner's are encouraged to do their best to ensure that the patents that they issue are valid and enforceable.  A lot of this stems from the public perception of the PTO and the US Patent system, particularly in view the "method of swinging on a swing," the PBJ patent, and other absurd patents that issued a number of years back.

I especially don't understand this blatant violation of PTO policy because 1. examiners get a count for allowing an application - they get zero counts for writing a second non-final, and 2. counts are now front loaded, so that examiners get more fractional counts for the first OA than later OAs - creating incentives to conduct a first, single, comprehensive search.  Kappos revised the count system to incentivize examiners in exactly the direction that MPEP 904 suggests, and yet the entire examining corps utterly disregards it and assumes that searches will be conducted ad nauseum until the application is allowed for some arbitrary reason...

Yes, examienr's get counts for allowing an application.  But they also get docked on their performance review for quality issues.  And those black marks can have a significant impact on the examiner's future at the office.  That quality system is one way the PTO has struck its bargain between its duty to advocate for the public and ensure valid patents, while still providing some level of customer service to applicants.

[patentatt]

One rationale that I have heard (and it is a good one), is that the USPTO is genuinely concerned with patent quality,  Thus, irrespective of what MPEP 904 may or may not say, examiner's are encouraged to do their best to ensure that the patents that they issue are valid and enforceable.  A lot of this stems from the public perception of the PTO and the US Patent system, particularly in view the "method of swinging on a swing," the PBJ patent, and other absurd patents that issued a number of years back.

Three points.

1. On the other hand, the PTO also has a policy of compact prosecution, not "conduct new searches in response to successful arguments until I have no choice but to suffer explaining to my supervisor why this case is allowable."  That policy is reflected not just in MPEP 904, but also throughout the MPEP and various OG notices.  Compact prosecution is a fundamental policy at the PTO that shouldn't be simply ignored because examiners systematically conduct superficial, incomplete searches.

2. Also, although examiners are under time constraints, it is not clear that compact prosecution and MPEP 904 are mutually exclusive.  If the examiner does a complete search on the first action, then both compact prosecution and patent quality can be maintained.  If the PTO doesn't provide the examiner enough resources to satisfy both policies, then the PTO needs to provide more resources or alter the policies, to avoid giving false impressions to the public.  I would even say that, even if the PTO doesn't provide enough time or pay to follow MPEP 904, it's the examiner's duty, as a government official serving the public, to not waste applicants times by churning applications and repeatedly conducting superficial searches.

3. Most importantly, the PTO should not have a blind allegiance to quality patents while silently tolerating, or even encouraging, bad rejections.  That was the Dudas philosophy that exploded the backlog.  Both kinds of errors - bad patents and bad rejections - hurt the public.  When the PTO issues a PBJ patent, the newspapaers make fun of it (it's not clear to me that all of those patents weren't in fact less obvious than they appear).  Nobody talks about the absurd rejections that examiner systematically make every single day though.  For a big client like IBM, those bad rejections add up and cost millions of dollars to resolve.  The PTO has to balance avoiding bad patents with avoiding bad rejections.  Ron Katznelson has excellent research on this point.

The fundamental problem, which Katznelson points out, is that examiners have an impossible task.  It is impossible to properly distinguish good and bad patents given the resources at the PTO.  The PTO needs to acknowledge this and then manage how its errors are allocated.  The policy cannot be that bad patents are to be avoided at all costs, including countless bad rejections, even if it bankrupts inventors and the patent bar.  The PTO needs to remember that there are plenty of hedges that protect the public from bad patents, the least of which are not 35 U.S.C. 282 and ex parte and inter partes reexamination.  The PTO needs to face the reality that it will not, and cannot, ever come close to doing a perfect job.

[Yak]

Seems to me that this is a real world example of how the constant budget restraints placed upon the PTO by yearly fee diversion effects patents, inventors, and business.  20 hours for a full examination?  It has taken me over 20 hours to just respond to an office action.  Allowing the PTO to keep the fees that inventors pay for the express purpose of filing, searching, and examination would seem to me to help a lot. 

Last Friday on Kappos' public blog he wrote:

"As you may know, the FY 2011 budget was enacted on April 15, 2011 and contains the USPTO’s appropriation through the end of this fiscal year, September 30, 2011. With the enactment of the Full-Year Continuing Appropriations Act, 2011, our total spending authority for FY 2011 has been limited to $2.09 billion.
 
Given this level of spending authority, USPTO will have to make significant reductions for the current fiscal year.
 
We have not come by these decisions lightly; I recognize that these measures will create new challenges for our ability to carry out our agency’s mission, but we will continue seeking innovative ways to do more with less.
 
Effective immediately and until further notice:
 
-Track One of the Three-Track program, which offers expedited patent examination and was scheduled to go into effect on May 4, 2011, is postponed;
-The opening of the planned Nationwide Workforce satellite office in Detroit, as well as consideration of other possible satellite office locations, is postponed;
-Hiring—both for new positions and backfills—is frozen;
-IT projects will be scaled back;
-Funding for Patent Cooperation Treaty (PCT) outsourcing will be substantially reduced;
-Employee training will be reduced;
-All overtime is suspended.
 
In addition, business units will be required to reduce all other non-compensation-related expenses, including travel, conferences and contracts.
 
Trademarks is unaffected and will maintain normal operations.
 
I would like to thank our entire team for their continuing cooperation and patience, and for their dedication and service during this challenging time."

That figure represents more than a $100,000,000.00 cut in what the PTO was expecting to spend during the remainder of the year. Kappos also said that in view of the funding cuts reflected in the final budget and affecting the U.S. government as a whole, the PTO will be unable to expend the additional $85-100 million in fees that it would be collecting during this fiscal year—funds that were anticipated as being able to be use to fund operations this year.  Further, Kappos acknowledged the fact that the PTO may very well be operating at the FY 2011 level for the foreseeable future and as a result, he had to make some difficult decisions in order to ensure the responsible stewardship of the agency.

[Examinerguy]

Why are examiners conducting so many searches?

MPEP 904 clearly states that the examiner should ordinarily do one comprehensive search and then, if the rejections are improper, allow the application (with perhaps a cursory search of intervening art).  Why do examiners assume that they will conduct search #2, search #3, or search #4, as you write above, if their first rejections don't stand up?  The claims haven't changed, so why do you need another search?  Honestly, I genuinely want to understand why this attitude has pervaded every corner of the examining corps.

I'm not entirely sure of your patent experience PatentATT. It seems however that you may be reading the MPEP and not relating it to how the process actually works. For a first action non-final I get about 14 hours. Do you really expect me to search through every single piece of prior art (in the world) related to your invention in the 8 or so hours I spend searching? You do understand how many millions of pages there are to search right? Go ahead, try it out...I want you to find every single piece of pertinent art out there on a particular case in 8 hours. If you find anything after that 8 hour mark you are not in compliance with the MPEP.

Heck...double or triple that time...there are always piece(s) of art out there that you have missed.