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[patentatt]

Just to be clear - it is an absolute scandal that the patent bar has given up on 1.181 petitions so much that examiners report never seeing them.

Examiners withdraw substantive rejections all the time.  Every day at the Patent Office, examiners withdraws hundreds of substantive rejections.

So examiners clearly make mistakes on issues of substantive rejections.

Yet people hardly ever file 1.181 petitions to have improper finality withdraw, to have a ground of rejection designated as new, to have an improper restriction requirement withdrawn, to have amendments or evidence entered, or to have improper objections withdrawn.  Yes, a few file 1.181 petitions.  But nowhere near in the proportions that people traverse substantive rejections.

Why the asymmetry?  Are examiners just really really good at procedure, and really bad at substance?

NO! NO! NO!

Examiners are horrible at making restriction requirements!  At least half of the restriction requirements that I see have glaring errors in them, as if Chapter 800 of the MPEP is written in a language that the examiner can't read.

A successful petition shouldn't be any more surprising that a successful Request for Reconsideration - but I don't think angry TC Directors knock on examiner doors when people file Requests for Reconsideration.  If TC Directors do that for petitions, then that's bizarre.

Still people don't petition.  The decisions are unreliable and the pendency is too long.

It's a scandal, and it is sad.  Kappos should really fix that before he leaves.

[Simpletown]

I remember an old timer who actually loved getting restrictions. He said it made him multiple times the profit he would have received otherwise over his career given all the subsequent patents he got to file. I take it from your vehemence against the process that you have lost clients over restrictions, or work in house at some huge patent mill like Inventive Ventures who appears to already file multiple related cases all at once? The restriction process is out of hand, but in most cases it still favors me. Many attorneys are better off filing divisional applications. Thus, unless the client has a strong preference to keep everything together why should they dissuade clients from paying to file more patents? I of course council my clients on their options, but I would rather have them file more patents than win on a petition. That means less work for me. Perhaps that's why you haven't seen such a backlash by the patent bar against a process that garners them more work? Everyone is of course entitled to their own way of doing things. Just another perspective.

[patentatt]

I remember an old timer who actually loved getting restrictions. He said it made him multiple times the profit he would have received otherwise over his career given all the subsequent patents he got to file.

That sounds like he was fleecing his clients.

I take it from your vehemence against the process that you have lost clients over restrictions, or work in house at some huge patent mill like Inventive Ventures who appears to already file multiple related cases all at once?

No, I just wish that the system properly trained and incentivized examiners to follow MPEP 800.

Filing multiple applications can have certain benefits in narrow circumstances.  It can simplify issues, quicken allowance, and lower prosecution costs for each given application.  In some cases, it can prevent inequitable conduct from infecting another application (although it can also fail to do that).

But, in any case, another application results in additional filing and prosecution costs, plus onerous maintenance fees.  Even if the cost of the individual application is lower, the decrease doesn't cover the aggregate increase in costs across all applications.  Almost all patents are never asserted, litigated, or reexamined.  So in the vast majority of cases, it is in your client's interest to minimize patents by maximizing claims/inventions per patent.

Ultimately, if the client wants to file an additional application, I want that to be the client's voluntary decision, and not forced upon them through an improper restriction requirement.

The restriction process is out of hand, but in most cases it still favors me. Many attorneys are better off filing divisional applications. Thus, unless the client has a strong preference to keep everything together why should they dissuade clients from paying to file more patents? I of course council my clients on their options, but I would rather have them file more patents than win on a petition. That means less work for me. Perhaps that's why you haven't seen such a backlash by the patent bar against a process that garners them more work? Everyone is of course entitled to their own way of doing things. Just another perspective.

Who cares if it saves you time and makes you money?  What about the client whose wallet is bleeding to pay for all these unnecessary government and service fees because some examiner was too lazy and incompetent to properly restrict or examine the application and the attorney was too lazy and greedy to stop him?

[Robert K S]

it is an absolute scandal that the patent bar has given up on 1.181 petitions so much that examiners report never seeing them.

It might not be a scandal.  It might be very much to the credit of the examiner doing the reporting.  If an examiner only issues legit objections, restriction requirements, etc., it is unlikely applicants will petition them.  It's only when examiners head down to crazytown that practitioners feel it's worth petitioning.

Who cares if it saves you time and makes you money?  What about the client whose wallet is bleeding to pay for all these unnecessary government and service fees because some examiner was too lazy and incompetent to properly restrict or examine the application and the attorney was too lazy and greedy to stop him?

Testify.

[Simpletown]

Who cares if it saves you time and makes you money?  What about the client whose wallet is bleeding to pay for all these unnecessary government and service fees because some examiner was too lazy and incompetent to properly restrict or examine the application and the attorney was too lazy and greedy to stop him?

I actually do care about things that save me time and money and have met almost no one who doesn't. Actually from the stand point of most practitioners both make them money. Though petitions are free, filing and drafting them is not. I did not say I mislead clients. I tell them their options for traversal. I advise them when they are likely to succeed with a petition and when they would likely not succeed, to the best of my ability to judge such matters. Just as I do not advise them to petition in every single instance, neither do I suggest they never petition. Either path would likely end up wasting someones money, and often does. I let them decide. However, I do not see the matter as black and white as you. There are benefits of clients filing divisionals and continutations for me and the huge government bureaucracy we all have to deal with. There are also advantages to petitioning every single issue and never giving examiners an inch. Clients probably spend more using the latter strategy, but if it is important, you have to bite the bullet and fight for every inch. However, these are not my decisions, they are the clients. Certain foreign clients hate traversing or countering the examiner. Sometimes to a painful degree. I also haven't taken it as my goal to train examiners. They normally do a pitiful job getting worse the longer they are there. If they do a poor job, it often makes my life easier in the form of free office actions and broader claims. If they do an egregiously bad job and are unwilling to rectify it themselves, it normally can be rectified easily by petition or appeal. Though the wait is far to long for such decisions. I worry more about the BPAI making improper rulings than what examiners do most of the time. When they make poor decisions it gets much more difficult to undo their error.

[patentatt]

it is an absolute scandal that the patent bar has given up on 1.181 petitions so much that examiners report never seeing them.

It might not be a scandal.  It might be very much to the credit of the examiner doing the reporting.  If an examiner only issues legit objections, restriction requirements, etc., it is unlikely applicants will petition them.  It's only when examiners head down to crazytown that practitioners feel it's worth petitioning.

I didn't mean any specific examiner.  I'm sure that JAE is a great examiner.

I just meant in general, across the patent bar, practitioners have lost faith in the effectiveness of petitions.

[JustAnotherExaminer]

Just to be clear - it is an absolute scandal that the patent bar has given up on 1.181 petitions so much that examiners report never seeing them.

Examiners withdraw substantive rejections all the time.  Every day at the Patent Office, examiners withdraws hundreds of substantive rejections.

So examiners clearly make mistakes on issues of substantive rejections.

The 181 is a "last resort" measure.  This is why they rarely exist. 

Take restrictions:  If the examiner makes a questionable restriction, applicant should traverse the restriction in their reply.  If the examiner still upholds the restriction and makes it final, they have to explain why in writing.  If applicant still disagrees they can call the examiner and ask for an oral explanation.  It is extremely rare to go past this point, which would require both the examiner saying "No, I'm right", and applicant saying "No, I'm right".  One side usually concedes by this point.

The same scenario exists for finality arguments.  You present it in writing and/or a phone call with the examiner.  Maybe even pull in their SPE.  Very rarely does this result in both sides still butting heads against one another.

[patentatt]

The 181 is a "last resort" measure.  This is why they rarely exist.

Petition is just appeal for non-appealable issues.

But petitions are much, much rarer than appeals.  I probably appeal about 10% of the cases that I work on.  I have hardly petitioned at all - mostly because firms don't believe they are effective and clients will not pay for the service fees.

How many appeals have you had, JAE?  If it's more than zero, the you've had more appeals than petitions.  Why should that be?  Are you better at entering amendments, making objections, making restriction requirements, and making actions final, than you are at rejecting claims?  Or does appeal simply work better than petitions do at correcting examiner errors?

Take restrictions:  If the examiner makes a questionable restriction, applicant should traverse the restriction in their reply.  If the examiner still upholds the restriction and makes it final, they have to explain why in writing.  If applicant still disagrees they can call the examiner and ask for an oral explanation.  It is extremely rare to go past this point, which would require both the examiner saying "No, I'm right", and applicant saying "No, I'm right".  One side usually concedes by this point.

1. I have never had an examiner admit that a restriction requirement was wrong.  I have had a SPE tell me point blank that a flagrantly wrong classification, which required "cryptography", and said that "mere nominal recitation of cryptography is not enough to meet this classification", was correct, even though the independent claim and dependent claims had zero reference to cryptography (not even nominal cryptography).  The SPE told me I could petition.  The firm and client would not authorize it.

2. There is no requirement to talk to the examiner on the phone before petitioning.

Petition is just like appeal for non-appeal issues.  It is a "last resort" in that sense, but that doesn't mean that examiners don't force applicants to use their option of last resort.  I appeal all the time, and I win 90% of my appeals.  But I usually don't have authorization to file petitions, and that's not uncommon - it's the same reason why you never see them.

The same scenario exists for finality arguments.  You present it in writing and/or a phone call with the examiner.  Maybe even pull in their SPE.  Very rarely does this result in both sides still butting heads against one another.

You have more experience with other patent attorneys than I do.  I can only give you my own experience at my firm. There are lots of applicants, and foreign assignees, who don't like to appeal anything.  Either they focus on the BPAI affirmance rate, without considering that most appeals don't get to the BPAI, or they don't care about their claim scope enough to justify the delay and expense of appeal.  But, at least at my firm, and at many others, it's very common to appeal.  JimIvey has said that he has a high appeal rate, too.  I know that many other practitioners do.  In many cases, it's the only way to get the examiner to withdraw bad rejections.

[Robert K S]

I think our appeal rate is closer to 50%+ than 10%.

[khazzah]

I think our appeal rate is closer to 50%+ than 10%.

Just to clarify, by "appeal rate" you mean you file a Notice of Appeal on half of your final OAs?

[NJ Patent1]

Can't speak for patentatt.  But looking back I doubt I've filed NoAs for more than 1 in 5 finals (double patentatt but still < 50%, and many of 1-in-5 just prophylactic anyway).  Why?  Bcs once I finally cut-through the hastily written and poorly articulated rejection - too often written in pidgeon English - the Examiner has a defensible prima facie position (as best I can discypher it).  Not that it couldn't be refuted.  A cost - benefit analysis for the client, not for me.

patentatt: As a matter of principle I share your frustration.  Why should we in the patent bar (and our paying clients) put-up with wacko restirctions and improper finals?  No reason whatsoever.  But as a matter of practicality/pragmatism (and client expnese); at least in chem/pharma, the composition claims, in most cases (there are exceptions), provide the protection needed, and Examiners are indeed overburdened.  Just withdraw the method-of-making claims.  Blame Congress, not Kapos and the Examining Corps.  Congress refused to end fee diversion and give the Director the $$$$ needed to up-grade the Office so Examiners don't have to squirm out of examining as many claims as possibly can so they make their "count". Quantity of applications searched and examined over quality.  Concerning 181s, let's have a beer and call it a truce.  I'm buying     

[patentatt]

(double patentatt but still < 50%, and many of 1-in-5 just prophylactic anyway).

I'm not counting prophylactic appeals just to keep the application pending.

patentatt: As a matter of principle I share your frustration.  Why should we in the patent bar (and our paying clients) put-up with wacko restirctions and improper finals?  No reason whatsoever.  But as a matter of practicality/pragmatism (and client expnese); at least in chem/pharma, the composition claims, in most cases (there are exceptions), provide the protection needed, and Examiners are indeed overburdened.  Just withdraw the method-of-making claims.  Blame Congress, not Kapos and the Examining Corps.  Congress refused to end fee diversion and give the Director the $$$$ needed to up-grade the Office so Examiners don't have to squirm out of examining as many claims as possibly can so they make their "count". Quantity of applications searched and examined over quality.

Of course, the withdrawn method-of-making claims should be rejoined after allowance of the composition claims.  MPEP 821.04(b).

Concerning 181s, let's have a beer and call it a truce.  I'm buying 

You can always buy me a beer, but my quarrel isn't with you.  It's with Kappos.  And he can also buy me a beer at his convenience.