12 ms·

Current USPTO patent examiner here. The most effective way to eliminate bad patents would be to give examiners more time, say double the time across the board t

Current USPTO patent examiner here. The most effective way to eliminate bad patents would be to give examiners more time, say double the time across the board to start. If an examiner can't find prior art in the little time they're given, and they have no other reasons to reject the application, they'll have to grant it. The amount of time was (basically) set in the 1970s based on data from the 1960s. There have been some minor increases since then. Several orders of magnitude more prior art exists now. And while search technology has improved, it hasn't become orders of magnitude better. So I'd argue that the workload has increased dramatically since the 1970s. Simply giving examiners more time would probably greatly reduce the grant rate, and also incidentally reduce examiner stress levels. Patent examination is a tough job, as examiners rarely get enough time to do a quality job, and this leads to the high stress levels. USPTO upper management is taking comments about the "robustness and reliability of patent rights" until February. You can leave your comments here: https://www.regulations.gov/document/PTO-P-2022-0025-0001 https://www.regulations.gov/document/PTO-P-2022-0025-0001 Unfortunately giving examiners more time is only briefly addressed in this request for comments. I think the public should really drive home the point that the procedural changes discussed wouldn't be anywhere near as effective as simply giving examiners more time. Don't believe examiners are overworked? Take a look at this subreddit: https://www.reddit.com/r/patentexaminer/ https://www.reddit.com/r/patentexaminer/ (Note that this comment is only my opinion, not that of the USPTO, US government, etc.)

joshspankit 4y ago
As someone who seems to have insight: Are the actual workings of the patent system (not the letter of the law, but how it’s used esp by those with money) such that the right AI could be put in place to filter out the majority of bad-faith patents?
- btrettel 4y ago
  The main problem is searching for prior art. There are AI search tools but they usually aren't good in my experience. It's rare that an AI search tool will return prior art that can be used in a rejection. Usually the prior art these tools find is related but not good enough. But sometimes (perhaps through random chance), a solid reference can be found. I found a 102 reference (the strongest kind) a few weeks ago for a recent application I worked on by using an AI search tool. I missed that reference earlier due to a text search I did missing some synonyms if I recall correctly. Don't take my word for it... here's r/patentexaminer on the USPTO's latest internal AI search tool: https://www.reddit.com/r/patentexaminer/comments/ybbb60/is_the_new_ai_similarity_search_providing_you/ https://www.reddit.com/r/patentexaminer/comments/ybbb60/is_t...
  - mysterydip 4y ago
    Are synonyms not built in to the search tool itself? "car" also finding "automobile" etc?
    - btrettel 4y ago
      I have no idea as these tools rarely explain how they work. There are a lot of AI patent search tools and I'm sure each of them works differently. Also, don't underestimate how difficult finding synonyms is. Many examiners, myself included, keep lists of search queries with a lot of synonyms to use later. I've been doing this for nearly two years now and my saved search queries keep growing. I don't expect this to end anytime soon. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)
  - joshspankit 4y ago
    Whether that’s true of current AI or not, it’s temporary. Finding prior art is inherently a “graphy” problem and current AI is getting better at graphy problems by the day (probably even by the hour). I have zero doubt that AI could solve this problem, but am unsure whether it will be allowed to.
    - btrettel 4y ago
      I think AI searches could be much better even without an improvement in the technology. Probably the best AI patent search tool would be written by a ML engineer who has spent time examining a wide variety of patents. The current tools seem to be written by people who have only a cursory understanding of how patent search works, and that limits the usefulness. For example, the current AI search tools don't seem to look at patent drawings at all. This is despite the fact that in many technologies, the drawings are the easiest way to determine similarity of the technologies. The words used vary a lot, but the drawings are frequently quite similar. Existing technology could be used to make a big improvement here, I think, but the problem is that people writing AI search tools seem to go for the easiest approach and only look at the text. It does get more complicated than that. When I examine applications with flow or electrical circuits, frequently I'll run into circuits which are equivalent in some sense but arranged differently. An AI patent search tool should be able to handle this problem. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)
tracker1 4y ago
I'm honestly of the mindset that at this point, the vast majority of patents, from what I've seen, don't pass the obviousness test. At least when it comes to process and software patents, which are very arguable in the first place. I do with the costs for a patent were a bit front-loaded where it costs even half the total amount just to (re)apply, in order to better pay for the review costs.
- brador 4y ago
  Every patent should be automatically granted and the courts can sort out the winners if there is a dispute. That is the system we have moved to.
  - pxmpxm 4y ago
    Agreed, though then the cost of litigation or patentability-discovery need to be orders of magnitude lower. Blow away USPTO filing/examination process and replace it with straight arbitration.
  - yumraj 4y ago
    > the courts can sort out the winners if there is a dispute. This will skew the issue towards deeper pockets. whoever has more money for court battles will win the patent case. Is that what we want?
    - cycomanic 4y ago
      That's already the reality.
      - tracker1 4y ago
        So, the answer is to make it significantly worse?
  - PeterisP 4y ago
    The purpose of the patent system is to facilitate the progress of the "useful arts". The existence of large quantities of bogus patents that need to be challenged in courts acts as a severe barrier of entry, hampering this progress - if we have a system where truly everything is automatically granted without review and has to be disputed in court, then arguably a patent system like that is a net negative, only hampering the progress, and thus has no right to exist.
pixelfarmer 4y ago
The whole process has a scaling issue build in, meaning you would need to scale both required time and people for the review process as time marches on.
- btrettel 4y ago
  I've thought exactly the same thing before. In my view, the amount of time an examiner gets should be directly tied to the amount of prior art needed to search. And fees should automatically increase as the amount of prior art increases. There should be an inflation component to fees as well. The USPTO seems to be doing decently over the decades in terms of increasing the number of examiners, though lately I know they've had a lot of difficulty hiring.
pxmpxm 4y ago
I have serious doubts that more examination time is the solution here - at the end of the day, the only people that have an incentive for completely thorough search are the people filing or defending themselves against the patent. And the people filing obviously make sure their language doesn't easily bring back prior art. Meanwhile you have no skin in the game at all. I would posit the better solution is curbing overly broad/abstract patent language that can be used to litigate anything and anywhere - and you can use patent trolls to do this work for you: Pretty much any NPE patent portfolio will work as a great benchmark for what not to allow, as they go out of their way to acquire poorly-examined patents with the exact characteristics i mentioned.
- btrettel 4y ago
  > I have serious doubts that more examination time is the solution here - at the end of the day, the only people that have an incentive for completely thorough search are the people filing or defending themselves against the patent. And the people filing obviously make sure their language doesn't easily bring back prior art. Meanwhile you have no skin in the game at all. While I agree with you that multiple stakeholders are incentivized to do thorough searches, not everyone agrees on that, and those stakeholders rarely ever do thorough searches. People aren't Homo economicus. Applicants are required by law to provide prior art on an IDS form. Usually that prior art is close but not close enough. And almost no one submits third-party prior art. I've never once received a third-party prior art submission. And as I said, not everyone agrees that these folks are incentivized to do good searches. For example, many patent attorneys recommend against doing patent searches for various reasons. > I would posit the better solution is curbing overly broad/abstract patent language that can be used to litigate anything and anywhere I strongly agree that enablement requirements should be higher. My understanding is that would require a change in the law, which would make this much harder than increasing examination time. And don't think that enablement rejections will take a lot less time than prior art rejections for examiners. Attorneys love to argue that sort of stuff, so rejections which are basically arguments are often time consuming. A prior art rejection can leave a lot less wiggle room for attorneys. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)
- patentatt 4y ago
tgflynn 4y ago
It seems to me that one of the biggest problems with patents is that it has become possible to patent the "what" instead of the "how". In most cases the "what" is obvious, it's the "how" that's hard. An example would be the Amazon One-Click patent. That should never have been granted because the "what", ie. the basic idea, is obvious and once you have that the implementation is trivial. To get a patent you should at least have to describe a method for solving a non-trivial problem and prove that it actually works.
- jvanderbot 4y ago
  I thought "how" was the whole point. Imagine I invent an air conditioner that's 100x more effective or efficient based on a new mechanical process I invented. I damn well better be able to patent that "how" despite a century of prior art in "what".
  - tgflynn 4y ago
    Yes, but that's the opposite situation to many software patents. If air conditioners didn't yet exist you shouldn't be able to patent just the idea of an air conditioner without coming up with an effective design for one. The One Click patent would be like patenting just the idea of an air conditioner because once you have that idea any software developer worth his salt could implement it.
- TheRealPomax 4y ago
  Except it wasn't: Amazon--like everyone else filing a patent--had a duty to bring the idea to market within the time frame that US patent law required, which they then did. _That_ is the how. Demanding the patent goes into the specific details on the "how" gets us things like "they implemented it in JS but we used TS so that's legally distinct, this patent doesn't apply to us" (ignoring how idiotic software patents are, and how stupidly long they are allowed to be active for) or "they made their machine using sheet metal and distinct PCB components, we used plastic and an FPGA, this patent doesn't apply". If you get a patent granted, and you sit on it, you lose that patent. If you make real the ideas/things described in your patent within the required time frame, your patent "kicks in" and you get to sue others for copying your idea, even if their specific realization of that idea differs from yours. Reducing for how long patents are granted, disallowing "tweaking-a-thing to renew the patent", and either drastically cutting down the duration of, or entirely canning, software patents, would be a nice move though.
xxpor 4y ago
How much time do you get today? I'm hesitant to support extra time because it can already take 5+ years from file to grant today.
- btrettel 4y ago
  This question is hard to answer as the time given varies depending on the patent classification and seniority. For the application which I'll post an office action for this afternoon, I will be credited 22.6 hours. (I can't claim this is representative of what I'm working on as a whole. Looks to be a bit high for my current docket, but I don't know if my current docket is representative either.) I'm a new examiner and that's the most time anyone will get for one of these applications. A more senior "primary examiner" would only get about 11.6 hours according to my estimate. In that amount of time, try searching for and writing a 10-30+ page report on any non-trivial technology that you have only some familiarity with... For the same application, the next action I take will get significantly less hours. I get about 4 hours to reply to an amendment (if it's rejected and it usually is). That includes searching and writing it up. I think examiners typically exceed that time and have to go under time for other tasks in order to reply to amendments. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)
  - xxpor 4y ago
    Thanks, that does seem like quite a short amount of time. I've seen what patent attorneys can do to the 2 page technical description that I've written (turn it into 100+ pages of legal nonsense), so I'm sympathetic. IMO it really seems like the USPTO is way understaffed and has been for quite a while then, since it would seem that the majority of the 5+ years is literally just sitting there waiting for someone to get to it.
temporallobe 4y ago
I do contracting for USPTO and have another perspective as an insider to their technology and internal processes (not legal), who works very closely with examiners and other stakeholders. The tools that patent examiners use is quite awful. Like many other government agencies, it’s embedded with legacy tools that are extremely obtuse, difficult to use, and time consuming. Many of these tools are decades old, unreliable, and have limited capabilities. We are JUST NOW starting a shift to the cloud (AWS), but most of that will be a “lift and shift”, keeping the old systems and practices in place while we figure out how to replace entire workflows. Basic functionality like searches, file transfers, data transforms, validation, content management, and archiving suffer from neglected maintenance or they’re so brittle that any little disruption can take a vital system down, further wasting examiners’ time. All of the above-mentioned issues are hidden time wasters that examiners have simply come to accept. My point is, you many not actually need more time, rather you may need better and more modern tools that would vastly improve efficiency and accuracy of examiner workflows.
- seeEllArr 4y ago
- fakedang 4y ago
  Is it possible to use publicly available patent office data to create a parallel database and tools which the PTO folks could use? Perhaps there is room for the development of an open-source collaborative effort to create a parallel data to fight back the trolls? Anyone else feel free to chime in!
- lordnacho 4y ago
  I used a patent lawyer who said the patent had to be filed using a fax machine. For those who are too young, a fax machine is this arcane device that used to be everywhere, like a remote photocopier. Got the US patent dated 2013. Was the lawyer pulling my leg?
  - MereInterest 4y ago
    It wouldn't surprise me, as faxes have some really weird legal exceptions carved out for them. For example, a faxed document is considered equivalent to the original, but a scanned image is not. So even though a scanned image signed with your private key would be much more verifiable than a faxed copy that is transmitted without encryption and printed in a shared office, the law considers the fax as better than the scanned image. Which is all to say that it wouldn't surprise me if there were a legal requirement for an "original document", and if that requirement could only be met by physical mail or fax.
dathinab 4y ago
I would also like that simple straight forward language is required and the typical (lets call it) claim stacking isn't allowed. A lot of patents would fall under obviously not palatable, or obviously priority art if they where written in simple to understand language. Also patents should not be legal if they fall under "everyone who looks for a solution to the problem they solve would find it (or something very close to it) by spending around ~100k in salaries on normal employees doing the research". (I choose 100k€ as this is where I live roughly a more senior and two non qualified junior software devs working on it for half a year, I also choose it because it less then what fully invalidating a absurd patent can easily costl.) I just don't see a point patents for anything any arbitrary company could easily invent by throwing "just" 3 non highly specialized people at it. As many companies would do so anyway if they need the problem solved. Such patents don't protect innovation they hurt innovation. Alternatively allow patenting them, but only with a patent live spawn of 2 years, i.e. "grant a head start for the first inventor without hampering innovation in general too much".
TheRealPomax 4y ago
To be fair, it'd also help if it didn't cost money for concerned citizens to submit the proof required to demonstrate prior art. Because even if you give examiners twice the time, that's only twice the work getting done, instead of orders of magnitude more with the help of people who are already experts in a field and can't believe a patent was granted because of [fill in prior art here].
gunapologist99 4y ago
> And while search technology has improved, it hasn't become orders of magnitude better. Are you saying that search technologies of 2022 are not orders of magnitude better than the search technology in the 1970's? Search tools in the 1970's were basically manually panning through microfiche. This was the time before even relational databases were commercially available, let alone full text search across thousands (or billions) of documents going back hundreds of years. The tech that we have now would be literally unbelievable to most practitioners in the 70's.
- soared 4y ago
  Sounds like they’re saying search tools available to employees at the uspto are not magnitudes better. From the other comment they’re using decades old tools.
- btrettel 4y ago
  To be clear, I do think that patent searching has improved. My point is that it hasn't kept up with the shear number of documents available. You have a point about the switch to computerized searches. Searching by examiners used to be looking through paper files, not microfiche, though. But patent search technology hasn't improved appreciably since full text patent search was introduced in the 1990s. There have been a lot of new documents to search in the past 25 years alone, yet there have been few changes to examining time. Also, full text search is probably not as useful as you think for patent examination. For many technologies it's the best way to search, but for many others (like a lot of what I examine), text search is much less useful than simply flipping through a ton of documents, looking at the drawings. It's common that important details exist only in the drawings or are most easily spotted in the drawings. So this limits the improvement one gets from switching to computerized searches. And, there's a big advantage to paper documents that wasn't maintained during the switch. From what I'm told there were a lot of useful notes from previous examiners written on the patent documents. Those notes were entirely thrown out when the USPTO switched to computerize searches. They could have digitized them, but USPTO upper management isn't known for thinking ahead. That's a loss of a lot of institutional knowledge. At present there is no way for examiners to share margin notes, and there should be. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)
ajb 4y ago
I'm not convinced that patent examiners could make good decisions on software given infinite time. A couple of reasons: Let's suppose you had access to all the source code in the world. Given a description of a patented invention, is there any way to find out if it is already implemented somewhere? The answer is no, there is no decidable method for doing that. The proposition that there is, violates Rice's theorem. By contrast, in other areas, for example drug discovery, a patent covers chemicals of a certain class having certain substructures. Whether another chemical is covered is algorithmically decidable. Let me emphasise that: people are complaining about the tools to find prior are are bad, but we can mathematically prove that perfect tools don't exist. I'd suggest that the burden of proof, that sufficiently good tools can exist, should fall on those advocating patentability of software. But of course, patent examiners don't even have access to all this code. Unlike in drug discovery, where the entire business relies on patents so any discoveries have been filed with the patent office, software companies don't need patents to do business so the vast majority of software ideas aren't filed with the patent office.
- kelseyfrog 4y ago
  While I applaud your effort, arguing that software would not benefit, the conclusions do not transfer across domains.
  - ajb 4y ago
    Well, if business methods are Turing complete, it transfers to that domain too :-)
- geraldwhen 4y ago
  It doesn’t matter since Obama passed the America invents act. America is now a first to file country, not first to invent.
  - ajb 4y ago
    No, AIA doesn't remove the concept of prior art, or the requirement that an invention be novel. It's a rather technical change regarding who of two patent filers gets priority. An invention that was publicly disclosed, or on public sale, is still prior art, even if no patent was filed.
ksec 4y ago
Hats off for even admitting you are are a patent examiner. On a site that is 99% against patents and all patents ( or software patents ) are evil.
- salawat 4y ago
  Patent examiners are not the enemy, and someone needs to do the work regardless. I feel bad for them myself, because their tooling is apparently terrible. Makes me wonder if I should take a look into the space and see if I can come up with some ideas for a halfway decent set of tools. I've seen a lot of patents whose prior art could be found by spending a bit of quality time with a thesaurus, or a halfway decent index.
  - btrettel 4y ago
    > I feel bad for them myself, because their tooling is apparently terrible. Makes me wonder if I should take a look into the space and see if I can come up with some ideas for a halfway decent set of tools. The search tools are acceptable, but could be improved a lot. To get ideas for improvements, you should talk to actual examiners and try searching for patents yourself. Unfortunately, too frequently people who don't know much about how patent searching actually works propose "improvements" that aren't actually improvements. Case in point: https://www.priorartarchive.org/ https://www.priorartarchive.org/ While well-intentioned, this site is doomed to mostly be unused by examiners. The classification search doesn't work. Classification search is a critical feature for patent examination. And the classifications are produced by machine learning, which usually produces poor quality classifications (despite loud pronouncements about how great machine learning is for this task). The internal search tools work mostly by keyboard, and this search site works mostly by mouse. Mouse is much slower in my experience, and this matters a lot for time-constrained people like patent examiners. The main advantage of the internal USPTO search tools is speed, not anything fancy: https://news.ycombinator.com/item?id=30978043 https://news.ycombinator.com/item?id=30978043 The documents on the "Prior Art Archive" have tons of broken images, too. > I've seen a lot of patents whose prior art could be found by spending a bit of quality time with a thesaurus, or a halfway decent index. Most of the time this is not the case. If it's something that simple, it would be easily rejected. Keep in mind that when the media says a patent covers X, it probably doesn't actually cover X. It probably covers something far more specific that isn't a problem for anyone. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)
anovikov 4y ago
It probably creates a snowball effect because examiners frustrated by their inability to do quality work within constraints they are given, probably churn out , so lower qualified ones/having less options, stay on the job, resulting in further decrease of quality... You must be onto something.
breck 4y ago
Friendly advice: start looking for a new job. https://longbets.org/855/ https://longbets.org/855/ https://breckyunits.com/the-intellectual-freedom-amendment.html https://breckyunits.com/the-intellectual-freedom-amendment.h...
entwife 4y ago
> And while search technology has improved, it hasn't become orders of magnitude better. The old "search technology" was "shoes" (boxes) of 5-20 patents arranged by patent classification. Patent examiners literally walking through the stacks of files to get the relevant shoes. This takes more physical time than doing a classification search using a computerized search tool. There were some advantages of the old system that were not transferred to the new search. Specifically, in the old system Examiners would see each other as they were walking the stacks. Notes could be left on the paper copies in the shoes. This knowledge sharing is not included in the current USPTO system.
silvestrov 4y ago
I think a much more efficient method would be to make the rule that if a citizen finds prior art more than 5 years older than the filing of the patent, then the patent holder must pay $1000 to the citizen and the patent will be invalidated. If the patent holder does not pay within 6 months, then all the patent holders patents since then will be invalidated. It has to function without involving the courts as they will bleed anybody who are no rich. This is simple, gruesome, but effective. I just can't imagine the politicians wanting this efficiency.
- KptMarchewa 4y ago
  Outsourcing of justice starts to be really popular in US I see.
- deleted 4y ago
  [deleted]
- JumpCrisscross 4y ago
  > a much more efficient method would be to make the rule that if a citizen finds prior art more than 5 years older than the filing of the patent, then the patent holder must pay $1000 to the citizen and the patent will be invalidated This would instantly lead to every patent being constantly challenged by everyone. All the time. Since you've created a non-judicial venue for these claims and counterclaims to be settled, you've also created a parallel legal profit centre. Vigilante justice is terrible not only for being gruesome, but also quite inefficient.
  - silvestrov 4y ago
    Add: When you challenge a patent you must pay $100 in fee which you will get back (in addition to the $1000) when and if the challenge succeeds.
    - JumpCrisscross 4y ago
      > When you challenge a patent you must pay $100 in fee which you will get back (in addition to the $1000) when and if the challenge succeeds This does little to change the dynamic. Paying a few hundred dollars to harass one’s competitors, commercially and ideologically, is peanuts.
uranium 4y ago
Commented; thanks for the pointer.
cryptonector 4y ago
IMO the "most effective way to eliminate bad patents would be to" set patent lifetimes that are industry/field specific -- you get a number of years of patent protection that should be enough to yield a positive ROI in that industry/field. So pharma might get 20 years like they do today, hardware might get 12, software might get 8, and cryptography might get 5 (no one ever turns much of a profit with cryptography patents -- the entire industry avoids them like the plague). This will greatly discourage patent trolls because they won't have enough years to shake people down. But it won't discourage legitimate patent owners, and it will encourage continuous innovation (so that products can keep some patent protection all the time).
btilly 4y ago
Not associated with the USPTO, but my name is on multiple patents. The problem is that examiners have no real way to determine what is "obvious". Every new field is a gold rush, and I've seen multiple fields slowed down dramatically by it. Worse yet, those rushing to new discoveries are usually not those rushing to file patents. This is most clearly where the patent system is destructive. I would like to see a rule that it is on the issuer of the patent to demonstrate that not only does it seem novel, but their patent is on something that could have been done, and would have had a market, for the previous decade. To demonstrate non-obviousness not by someone's say-so, but by the fact that people failed to figure it out.
late2part 4y ago
It's tiring to hear people in government say all their problems can be solved with more people and more money.
- btrettel 4y ago
  The situation here is different than in other government agencies. The USPTO is funded entirely by user fees, not taxes. In fact, the USPTO actually diverts a lot of money back to the federal government, so they don't even get to keep their own revenues.
patentatt 4y ago
Former examiner here. Largely agree, however, you and I both know you can string together some hand-wavey 6-reference 103 if you have a gut feeling you shouldn't grant something but you haven't found any better prior art ;-)
amelius 4y ago
What do you think about the idea of having a "challenge period", i.e. a time where other parties than the applicant can come up with solutions to the problem stated in the patent (or with prior art)? I bet there is an army of volunteers that would want to help fight illegitimate patents. Also, if $BIGCORP tries to file a patent application, then why can't $SMALL_COMPETITOR contest it during such a challenge period without going through a court of law?
- MikePlacid 4y ago
  The original article describes three small (actually - one-person) companies going after some big guys. There is a patent troll behind them, but the article mentions that such a discovery is not an ordinary thing to do. At the patent troll is still a much smaller company than defendants- I guess. Besides, the idea of punishing me for being successful, that is - having more sales of my product, while popular, seems extremely counterproductive to me.
- btrettel 4y ago
  You can submit prior art as a third-party while the application is being examined here: https://www.uspto.gov/patents/initiatives/third-party-preissuance-submissions https://www.uspto.gov/patents/initiatives/third-party-preiss... A lot of people propose things similar to what you have, but in practice these sorts of things almost never are used. You also don't need a formal procedure like this. I'm sure if you contact the examiner assigned to the application, they'll listen if you have a valid legal reason to reject the application. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)
kirrent 4y ago
I hope you don't mind if I ask a few nosy questions. 1. How much time do you get given to perform a search? How comprehensive is searching (and how much time is given) if PCT or EP searches have already been performed? 2. Given existing citations (e.g. from a US PCT search), how long do you get to perform examination? How long do you get given for later reports? 3. How common is searching following amendments and how long do you get given? 4. How much time do you get given for further reports? 5. Do examiners do classification as an additional duty? If so, how much time do you get? 6. Have you Epoque (the EPO's search software)? If so, how does it compare to the tools you use?
- btrettel 4y ago
  1. and 2. Depends heavily on the patent classification and seniority. I get around 20-25 hours for a first action, much less for subsequent actions. I'm a newbie, though. Primary examiners in my area probably get only about 10-13 hours for a first action. The time I get is for both search and examination. Comprehensiveness varies and can be independent of whether other offices have done searches. It can be hard to get even two examiners at the same office to agree on what good prior art is. I've inherited applications from an examiner who retired and I didn't always agree with their prior art. I tend to use foreign searches as starting points for my own searches. I'd guess about half the time what I find is the same as the foreign search or comparable but different. Often I find clear deficiencies in foreign searches. The time I get does not change if there are foreign actions. I get so little time that I hesitate to even write the previous sentence in case it gives upper management ideas about where to reduce time... Searching at patent offices is never particularly comprehensive in my experience. If someone wants a comprehensive search, their main option is to do it themselves. 3. I am required to do at least a cursory search after any amendment as far as I'm aware. How detailed the search is varies. See the next point for how much time I get. 4. I get about 4 hours for a final rejection. The US has "after-final" actions as well which can provide up to 3 hours if I recall correctly, but are much more limited in scope and rarely used properly by applicants in my experience. After-final actions should be used mainly to cancel any claims not declared allowable by the examiner, in my opinion. 5. All USPTO examiners have classification as one of their duties now, but they are given very little time for this. The time varies between 0 time, 30 minutes, and 1 hour depending on the results of an approval process. Longer version: The USPTO recently made some significant changes to classification and docketing. Applications are docketed to examiners based on a combination of the CPC and USPC classification now, with the eventual goal of eliminating the USPC component of the docketing system. Here's how it works: Poorly paid contractors classify patent applications. Based on the classification from the contractors, applications are docketed to examiners. Examiners then have the opportunity to correct the classification if it's wrong. As it turns out, poorly paid contractors don't classify well. I'd guess that about 10% of the applications I'm docketed have serious classification issues. The precise number probably varies appreciably between examiners. I will try to correct the classification issues with a process called a C* challenge. This requires approval by examiners called SCEs. The SCEs will check if they agree with the examiner's proposed classification. Sometimes they'll add their own classification, but usually not. The amount of time an examiner gets is zero if none of the changes are approved, 30 minutes if the changes are approved but the changes do not cause the application to be transferred from the examiner, and 1 hour if the changes are approved and the changes cause the application to be transferred. Unfortunately, properly classifying applications frequently takes far longer than 1 hour. This is particularly true when examiners have to classify applications in areas they know little about. I don't bother changing the classification at this point if it seems mostly right because the amount of time I get for correcting the classification is so small. I will only try to correct the classification if it's egregiously wrong. 6. I think I saw some screenshots of the EPO's software once, but I don't really know how it compares to what the USPTO uses. For what it's worth, the USPTO's new public search tool is very similar to the internal tool. The main difference is that the USPTO decided to only include US patent documents in the public version, which is a shame. https://ppubs.uspto.gov/pubwebapp/static/pages/landing.html https://ppubs.uspto.gov/pubwebapp/static/pages/landing.html (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)
deleted 4y ago
[deleted]
notlukesky 4y ago
What’s the best way to invalidate a patent when you have prior art from years before without lawyers? Or do you have to pay them no matter what?
- gota 4y ago
  Please don't trust what I'm going to say without checking with a lawyer or someone who actually knows their stuff - You can email the author, I guess. As far as I know patent authors have an eternal duty of disclosing prior art on their own patents. I assume that if you email prior art to the author they have to report it to the USPTO. Not sure if the patent would ever be invalidated though
smeagull 4y ago
That's silly. The incentives need to be flipped. Before the target of a patent suit pays a dollar in court costs the filer needs to pay through the nose proving that the case is worth hearing, with the potential to lose the costs if they fail, before any defense occurs at all.
theGnuMe 4y ago
Do you see AI decreasing your workload? When you look for prior art would something like gpt-3 be useful?
- btrettel 4y ago
  See this other series of posts I made and the links from them: https://news.ycombinator.com/item?id=33506241 https://news.ycombinator.com/item?id=33506241 I don't see how GPT-3 could be particularly useful for me as it exists now. GPT-3 doesn't know anything about the prior art, so I can't see how it would work there. I think some sort of AI system could be useful for non-prior-art analysis like 101 or 112(b) compliance, but that would need a specially trained system. The data's out there [0]. I think if combined with existing 112(b) analysis software this could be quite useful, but not as useful as something good that finds prior art. [0] https://www.uspto.gov/ip-policy/economic-research/research-datasets/office-action-research-dataset-patents https://www.uspto.gov/ip-policy/economic-research/research-d...
rbanffy 4y ago
> as simply giving examiners more time. Specifically on the prior art search aspect, there should be a bigger burden on the applicant to find meaningful prior art. If the examiner finds something obvious, the application should be deemed fraudulent and carry some stiff penalties.

joshspankit 4y ago

As someone who seems to have insight: Are the actual workings of the patent system (not the letter of the law, but how it’s used esp by those with money) such that the right AI could be put in place to filter out the majority of bad-faith patents?

btrettel 4y ago
The main problem is searching for prior art. There are AI search tools but they usually aren't good in my experience. It's rare that an AI search tool will return prior art that can be used in a rejection. Usually the prior art these tools find is related but not good enough. But sometimes (perhaps through random chance), a solid reference can be found. I found a 102 reference (the strongest kind) a few weeks ago for a recent application I worked on by using an AI search tool. I missed that reference earlier due to a text search I did missing some synonyms if I recall correctly. Don't take my word for it... here's r/patentexaminer on the USPTO's latest internal AI search tool: https://www.reddit.com/r/patentexaminer/comments/ybbb60/is_the_new_ai_similarity_search_providing_you/ https://www.reddit.com/r/patentexaminer/comments/ybbb60/is_t...
- mysterydip 4y ago
  Are synonyms not built in to the search tool itself? "car" also finding "automobile" etc?
  - btrettel 4y ago
    I have no idea as these tools rarely explain how they work. There are a lot of AI patent search tools and I'm sure each of them works differently. Also, don't underestimate how difficult finding synonyms is. Many examiners, myself included, keep lists of search queries with a lot of synonyms to use later. I've been doing this for nearly two years now and my saved search queries keep growing. I don't expect this to end anytime soon. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)
- joshspankit 4y ago
  Whether that’s true of current AI or not, it’s temporary. Finding prior art is inherently a “graphy” problem and current AI is getting better at graphy problems by the day (probably even by the hour). I have zero doubt that AI could solve this problem, but am unsure whether it will be allowed to.
  - btrettel 4y ago
    I think AI searches could be much better even without an improvement in the technology. Probably the best AI patent search tool would be written by a ML engineer who has spent time examining a wide variety of patents. The current tools seem to be written by people who have only a cursory understanding of how patent search works, and that limits the usefulness. For example, the current AI search tools don't seem to look at patent drawings at all. This is despite the fact that in many technologies, the drawings are the easiest way to determine similarity of the technologies. The words used vary a lot, but the drawings are frequently quite similar. Existing technology could be used to make a big improvement here, I think, but the problem is that people writing AI search tools seem to go for the easiest approach and only look at the text. It does get more complicated than that. When I examine applications with flow or electrical circuits, frequently I'll run into circuits which are equivalent in some sense but arranged differently. An AI patent search tool should be able to handle this problem. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)

tracker1 4y ago

I'm honestly of the mindset that at this point, the vast majority of patents, from what I've seen, don't pass the obviousness test. At least when it comes to process and software patents, which are very arguable in the first place. I do with the costs for a patent were a bit front-loaded where it costs even half the total amount just to (re)apply, in order to better pay for the review costs.

brador 4y ago
Every patent should be automatically granted and the courts can sort out the winners if there is a dispute. That is the system we have moved to.
- pxmpxm 4y ago
  Agreed, though then the cost of litigation or patentability-discovery need to be orders of magnitude lower. Blow away USPTO filing/examination process and replace it with straight arbitration.
- yumraj 4y ago
  > the courts can sort out the winners if there is a dispute. This will skew the issue towards deeper pockets. whoever has more money for court battles will win the patent case. Is that what we want?
  - cycomanic 4y ago
    That's already the reality.
    - tracker1 4y ago
      So, the answer is to make it significantly worse?
- PeterisP 4y ago
  The purpose of the patent system is to facilitate the progress of the "useful arts". The existence of large quantities of bogus patents that need to be challenged in courts acts as a severe barrier of entry, hampering this progress - if we have a system where truly everything is automatically granted without review and has to be disputed in court, then arguably a patent system like that is a net negative, only hampering the progress, and thus has no right to exist.

pixelfarmer 4y ago

The whole process has a scaling issue build in, meaning you would need to scale both required time and people for the review process as time marches on.

btrettel 4y ago
I've thought exactly the same thing before. In my view, the amount of time an examiner gets should be directly tied to the amount of prior art needed to search. And fees should automatically increase as the amount of prior art increases. There should be an inflation component to fees as well. The USPTO seems to be doing decently over the decades in terms of increasing the number of examiners, though lately I know they've had a lot of difficulty hiring.

pxmpxm 4y ago

I have serious doubts that more examination time is the solution here - at the end of the day, the only people that have an incentive for completely thorough search are the people filing or defending themselves against the patent. And the people filing obviously make sure their language doesn't easily bring back prior art. Meanwhile you have no skin in the game at all. I would posit the better solution is curbing overly broad/abstract patent language that can be used to litigate anything and anywhere - and you can use patent trolls to do this work for you: Pretty much any NPE patent portfolio will work as a great benchmark for what not to allow, as they go out of their way to acquire poorly-examined patents with the exact characteristics i mentioned.

btrettel 4y ago
> I have serious doubts that more examination time is the solution here - at the end of the day, the only people that have an incentive for completely thorough search are the people filing or defending themselves against the patent. And the people filing obviously make sure their language doesn't easily bring back prior art. Meanwhile you have no skin in the game at all. While I agree with you that multiple stakeholders are incentivized to do thorough searches, not everyone agrees on that, and those stakeholders rarely ever do thorough searches. People aren't Homo economicus. Applicants are required by law to provide prior art on an IDS form. Usually that prior art is close but not close enough. And almost no one submits third-party prior art. I've never once received a third-party prior art submission. And as I said, not everyone agrees that these folks are incentivized to do good searches. For example, many patent attorneys recommend against doing patent searches for various reasons. > I would posit the better solution is curbing overly broad/abstract patent language that can be used to litigate anything and anywhere I strongly agree that enablement requirements should be higher. My understanding is that would require a change in the law, which would make this much harder than increasing examination time. And don't think that enablement rejections will take a lot less time than prior art rejections for examiners. Attorneys love to argue that sort of stuff, so rejections which are basically arguments are often time consuming. A prior art rejection can leave a lot less wiggle room for attorneys. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)
patentatt 4y ago

tgflynn 4y ago

It seems to me that one of the biggest problems with patents is that it has become possible to patent the "what" instead of the "how". In most cases the "what" is obvious, it's the "how" that's hard. An example would be the Amazon One-Click patent. That should never have been granted because the "what", ie. the basic idea, is obvious and once you have that the implementation is trivial. To get a patent you should at least have to describe a method for solving a non-trivial problem and prove that it actually works.

jvanderbot 4y ago
I thought "how" was the whole point. Imagine I invent an air conditioner that's 100x more effective or efficient based on a new mechanical process I invented. I damn well better be able to patent that "how" despite a century of prior art in "what".
- tgflynn 4y ago
  Yes, but that's the opposite situation to many software patents. If air conditioners didn't yet exist you shouldn't be able to patent just the idea of an air conditioner without coming up with an effective design for one. The One Click patent would be like patenting just the idea of an air conditioner because once you have that idea any software developer worth his salt could implement it.
TheRealPomax 4y ago
Except it wasn't: Amazon--like everyone else filing a patent--had a duty to bring the idea to market within the time frame that US patent law required, which they then did. _That_ is the how. Demanding the patent goes into the specific details on the "how" gets us things like "they implemented it in JS but we used TS so that's legally distinct, this patent doesn't apply to us" (ignoring how idiotic software patents are, and how stupidly long they are allowed to be active for) or "they made their machine using sheet metal and distinct PCB components, we used plastic and an FPGA, this patent doesn't apply". If you get a patent granted, and you sit on it, you lose that patent. If you make real the ideas/things described in your patent within the required time frame, your patent "kicks in" and you get to sue others for copying your idea, even if their specific realization of that idea differs from yours. Reducing for how long patents are granted, disallowing "tweaking-a-thing to renew the patent", and either drastically cutting down the duration of, or entirely canning, software patents, would be a nice move though.

xxpor 4y ago

How much time do you get today? I'm hesitant to support extra time because it can already take 5+ years from file to grant today.

btrettel 4y ago
This question is hard to answer as the time given varies depending on the patent classification and seniority. For the application which I'll post an office action for this afternoon, I will be credited 22.6 hours. (I can't claim this is representative of what I'm working on as a whole. Looks to be a bit high for my current docket, but I don't know if my current docket is representative either.) I'm a new examiner and that's the most time anyone will get for one of these applications. A more senior "primary examiner" would only get about 11.6 hours according to my estimate. In that amount of time, try searching for and writing a 10-30+ page report on any non-trivial technology that you have only some familiarity with... For the same application, the next action I take will get significantly less hours. I get about 4 hours to reply to an amendment (if it's rejected and it usually is). That includes searching and writing it up. I think examiners typically exceed that time and have to go under time for other tasks in order to reply to amendments. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)
- xxpor 4y ago
  Thanks, that does seem like quite a short amount of time. I've seen what patent attorneys can do to the 2 page technical description that I've written (turn it into 100+ pages of legal nonsense), so I'm sympathetic. IMO it really seems like the USPTO is way understaffed and has been for quite a while then, since it would seem that the majority of the 5+ years is literally just sitting there waiting for someone to get to it.

temporallobe 4y ago

I do contracting for USPTO and have another perspective as an insider to their technology and internal processes (not legal), who works very closely with examiners and other stakeholders. The tools that patent examiners use is quite awful. Like many other government agencies, it’s embedded with legacy tools that are extremely obtuse, difficult to use, and time consuming. Many of these tools are decades old, unreliable, and have limited capabilities. We are JUST NOW starting a shift to the cloud (AWS), but most of that will be a “lift and shift”, keeping the old systems and practices in place while we figure out how to replace entire workflows. Basic functionality like searches, file transfers, data transforms, validation, content management, and archiving suffer from neglected maintenance or they’re so brittle that any little disruption can take a vital system down, further wasting examiners’ time. All of the above-mentioned issues are hidden time wasters that examiners have simply come to accept. My point is, you many not actually need more time, rather you may need better and more modern tools that would vastly improve efficiency and accuracy of examiner workflows.

seeEllArr 4y ago
fakedang 4y ago
Is it possible to use publicly available patent office data to create a parallel database and tools which the PTO folks could use? Perhaps there is room for the development of an open-source collaborative effort to create a parallel data to fight back the trolls? Anyone else feel free to chime in!
lordnacho 4y ago
I used a patent lawyer who said the patent had to be filed using a fax machine. For those who are too young, a fax machine is this arcane device that used to be everywhere, like a remote photocopier. Got the US patent dated 2013. Was the lawyer pulling my leg?
- MereInterest 4y ago
  It wouldn't surprise me, as faxes have some really weird legal exceptions carved out for them. For example, a faxed document is considered equivalent to the original, but a scanned image is not. So even though a scanned image signed with your private key would be much more verifiable than a faxed copy that is transmitted without encryption and printed in a shared office, the law considers the fax as better than the scanned image. Which is all to say that it wouldn't surprise me if there were a legal requirement for an "original document", and if that requirement could only be met by physical mail or fax.

dathinab 4y ago

I would also like that simple straight forward language is required and the typical (lets call it) claim stacking isn't allowed. A lot of patents would fall under obviously not palatable, or obviously priority art if they where written in simple to understand language. Also patents should not be legal if they fall under "everyone who looks for a solution to the problem they solve would find it (or something very close to it) by spending around ~100k in salaries on normal employees doing the research". (I choose 100k€ as this is where I live roughly a more senior and two non qualified junior software devs working on it for half a year, I also choose it because it less then what fully invalidating a absurd patent can easily costl.) I just don't see a point patents for anything any arbitrary company could easily invent by throwing "just" 3 non highly specialized people at it. As many companies would do so anyway if they need the problem solved. Such patents don't protect innovation they hurt innovation. Alternatively allow patenting them, but only with a patent live spawn of 2 years, i.e. "grant a head start for the first inventor without hampering innovation in general too much".

TheRealPomax 4y ago

To be fair, it'd also help if it didn't cost money for concerned citizens to submit the proof required to demonstrate prior art. Because even if you give examiners twice the time, that's only twice the work getting done, instead of orders of magnitude more with the help of people who are already experts in a field and can't believe a patent was granted because of [fill in prior art here].

gunapologist99 4y ago

> And while search technology has improved, it hasn't become orders of magnitude better. Are you saying that search technologies of 2022 are not orders of magnitude better than the search technology in the 1970's? Search tools in the 1970's were basically manually panning through microfiche. This was the time before even relational databases were commercially available, let alone full text search across thousands (or billions) of documents going back hundreds of years. The tech that we have now would be literally unbelievable to most practitioners in the 70's.

soared 4y ago
Sounds like they’re saying search tools available to employees at the uspto are not magnitudes better. From the other comment they’re using decades old tools.
btrettel 4y ago
To be clear, I do think that patent searching has improved. My point is that it hasn't kept up with the shear number of documents available. You have a point about the switch to computerized searches. Searching by examiners used to be looking through paper files, not microfiche, though. But patent search technology hasn't improved appreciably since full text patent search was introduced in the 1990s. There have been a lot of new documents to search in the past 25 years alone, yet there have been few changes to examining time. Also, full text search is probably not as useful as you think for patent examination. For many technologies it's the best way to search, but for many others (like a lot of what I examine), text search is much less useful than simply flipping through a ton of documents, looking at the drawings. It's common that important details exist only in the drawings or are most easily spotted in the drawings. So this limits the improvement one gets from switching to computerized searches. And, there's a big advantage to paper documents that wasn't maintained during the switch. From what I'm told there were a lot of useful notes from previous examiners written on the patent documents. Those notes were entirely thrown out when the USPTO switched to computerize searches. They could have digitized them, but USPTO upper management isn't known for thinking ahead. That's a loss of a lot of institutional knowledge. At present there is no way for examiners to share margin notes, and there should be. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)

ajb 4y ago

I'm not convinced that patent examiners could make good decisions on software given infinite time. A couple of reasons: Let's suppose you had access to all the source code in the world. Given a description of a patented invention, is there any way to find out if it is already implemented somewhere? The answer is no, there is no decidable method for doing that. The proposition that there is, violates Rice's theorem. By contrast, in other areas, for example drug discovery, a patent covers chemicals of a certain class having certain substructures. Whether another chemical is covered is algorithmically decidable. Let me emphasise that: people are complaining about the tools to find prior are are bad, but we can mathematically prove that perfect tools don't exist. I'd suggest that the burden of proof, that sufficiently good tools can exist, should fall on those advocating patentability of software. But of course, patent examiners don't even have access to all this code. Unlike in drug discovery, where the entire business relies on patents so any discoveries have been filed with the patent office, software companies don't need patents to do business so the vast majority of software ideas aren't filed with the patent office.

kelseyfrog 4y ago
While I applaud your effort, arguing that software would not benefit, the conclusions do not transfer across domains.
- ajb 4y ago
  Well, if business methods are Turing complete, it transfers to that domain too :-)
geraldwhen 4y ago
It doesn’t matter since Obama passed the America invents act. America is now a first to file country, not first to invent.
- ajb 4y ago
  No, AIA doesn't remove the concept of prior art, or the requirement that an invention be novel. It's a rather technical change regarding who of two patent filers gets priority. An invention that was publicly disclosed, or on public sale, is still prior art, even if no patent was filed.

ksec 4y ago

Hats off for even admitting you are are a patent examiner. On a site that is 99% against patents and all patents ( or software patents ) are evil.

salawat 4y ago
Patent examiners are not the enemy, and someone needs to do the work regardless. I feel bad for them myself, because their tooling is apparently terrible. Makes me wonder if I should take a look into the space and see if I can come up with some ideas for a halfway decent set of tools. I've seen a lot of patents whose prior art could be found by spending a bit of quality time with a thesaurus, or a halfway decent index.
- btrettel 4y ago
  > I feel bad for them myself, because their tooling is apparently terrible. Makes me wonder if I should take a look into the space and see if I can come up with some ideas for a halfway decent set of tools. The search tools are acceptable, but could be improved a lot. To get ideas for improvements, you should talk to actual examiners and try searching for patents yourself. Unfortunately, too frequently people who don't know much about how patent searching actually works propose "improvements" that aren't actually improvements. Case in point: https://www.priorartarchive.org/ https://www.priorartarchive.org/ While well-intentioned, this site is doomed to mostly be unused by examiners. The classification search doesn't work. Classification search is a critical feature for patent examination. And the classifications are produced by machine learning, which usually produces poor quality classifications (despite loud pronouncements about how great machine learning is for this task). The internal search tools work mostly by keyboard, and this search site works mostly by mouse. Mouse is much slower in my experience, and this matters a lot for time-constrained people like patent examiners. The main advantage of the internal USPTO search tools is speed, not anything fancy: https://news.ycombinator.com/item?id=30978043 https://news.ycombinator.com/item?id=30978043 The documents on the "Prior Art Archive" have tons of broken images, too. > I've seen a lot of patents whose prior art could be found by spending a bit of quality time with a thesaurus, or a halfway decent index. Most of the time this is not the case. If it's something that simple, it would be easily rejected. Keep in mind that when the media says a patent covers X, it probably doesn't actually cover X. It probably covers something far more specific that isn't a problem for anyone. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)

anovikov 4y ago

It probably creates a snowball effect because examiners frustrated by their inability to do quality work within constraints they are given, probably churn out , so lower qualified ones/having less options, stay on the job, resulting in further decrease of quality... You must be onto something.

breck 4y ago

Friendly advice: start looking for a new job. https://longbets.org/855/ https://longbets.org/855/ https://breckyunits.com/the-intellectual-freedom-amendment.html https://breckyunits.com/the-intellectual-freedom-amendment.h...

entwife 4y ago

> And while search technology has improved, it hasn't become orders of magnitude better. The old "search technology" was "shoes" (boxes) of 5-20 patents arranged by patent classification. Patent examiners literally walking through the stacks of files to get the relevant shoes. This takes more physical time than doing a classification search using a computerized search tool. There were some advantages of the old system that were not transferred to the new search. Specifically, in the old system Examiners would see each other as they were walking the stacks. Notes could be left on the paper copies in the shoes. This knowledge sharing is not included in the current USPTO system.

silvestrov 4y ago

I think a much more efficient method would be to make the rule that if a citizen finds prior art more than 5 years older than the filing of the patent, then the patent holder must pay $1000 to the citizen and the patent will be invalidated. If the patent holder does not pay within 6 months, then all the patent holders patents since then will be invalidated. It has to function without involving the courts as they will bleed anybody who are no rich. This is simple, gruesome, but effective. I just can't imagine the politicians wanting this efficiency.

KptMarchewa 4y ago
Outsourcing of justice starts to be really popular in US I see.
deleted 4y ago
[deleted]
JumpCrisscross 4y ago
> a much more efficient method would be to make the rule that if a citizen finds prior art more than 5 years older than the filing of the patent, then the patent holder must pay $1000 to the citizen and the patent will be invalidated This would instantly lead to every patent being constantly challenged by everyone. All the time. Since you've created a non-judicial venue for these claims and counterclaims to be settled, you've also created a parallel legal profit centre. Vigilante justice is terrible not only for being gruesome, but also quite inefficient.
- silvestrov 4y ago
  Add: When you challenge a patent you must pay $100 in fee which you will get back (in addition to the $1000) when and if the challenge succeeds.
  - JumpCrisscross 4y ago
    > When you challenge a patent you must pay $100 in fee which you will get back (in addition to the $1000) when and if the challenge succeeds This does little to change the dynamic. Paying a few hundred dollars to harass one’s competitors, commercially and ideologically, is peanuts.

uranium 4y ago

Commented; thanks for the pointer.

cryptonector 4y ago

IMO the "most effective way to eliminate bad patents would be to" set patent lifetimes that are industry/field specific -- you get a number of years of patent protection that should be enough to yield a positive ROI in that industry/field. So pharma might get 20 years like they do today, hardware might get 12, software might get 8, and cryptography might get 5 (no one ever turns much of a profit with cryptography patents -- the entire industry avoids them like the plague). This will greatly discourage patent trolls because they won't have enough years to shake people down. But it won't discourage legitimate patent owners, and it will encourage continuous innovation (so that products can keep some patent protection all the time).

btilly 4y ago

Not associated with the USPTO, but my name is on multiple patents. The problem is that examiners have no real way to determine what is "obvious". Every new field is a gold rush, and I've seen multiple fields slowed down dramatically by it. Worse yet, those rushing to new discoveries are usually not those rushing to file patents. This is most clearly where the patent system is destructive. I would like to see a rule that it is on the issuer of the patent to demonstrate that not only does it seem novel, but their patent is on something that could have been done, and would have had a market, for the previous decade. To demonstrate non-obviousness not by someone's say-so, but by the fact that people failed to figure it out.

late2part 4y ago

It's tiring to hear people in government say all their problems can be solved with more people and more money.

btrettel 4y ago
The situation here is different than in other government agencies. The USPTO is funded entirely by user fees, not taxes. In fact, the USPTO actually diverts a lot of money back to the federal government, so they don't even get to keep their own revenues.

patentatt 4y ago

Former examiner here. Largely agree, however, you and I both know you can string together some hand-wavey 6-reference 103 if you have a gut feeling you shouldn't grant something but you haven't found any better prior art ;-)

amelius 4y ago

What do you think about the idea of having a "challenge period", i.e. a time where other parties than the applicant can come up with solutions to the problem stated in the patent (or with prior art)? I bet there is an army of volunteers that would want to help fight illegitimate patents. Also, if $BIGCORP tries to file a patent application, then why can't $SMALL_COMPETITOR contest it during such a challenge period without going through a court of law?

MikePlacid 4y ago
The original article describes three small (actually - one-person) companies going after some big guys. There is a patent troll behind them, but the article mentions that such a discovery is not an ordinary thing to do. At the patent troll is still a much smaller company than defendants- I guess. Besides, the idea of punishing me for being successful, that is - having more sales of my product, while popular, seems extremely counterproductive to me.
btrettel 4y ago
You can submit prior art as a third-party while the application is being examined here: https://www.uspto.gov/patents/initiatives/third-party-preissuance-submissions https://www.uspto.gov/patents/initiatives/third-party-preiss... A lot of people propose things similar to what you have, but in practice these sorts of things almost never are used. You also don't need a formal procedure like this. I'm sure if you contact the examiner assigned to the application, they'll listen if you have a valid legal reason to reject the application. (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)

kirrent 4y ago

I hope you don't mind if I ask a few nosy questions. 1. How much time do you get given to perform a search? How comprehensive is searching (and how much time is given) if PCT or EP searches have already been performed? 2. Given existing citations (e.g. from a US PCT search), how long do you get to perform examination? How long do you get given for later reports? 3. How common is searching following amendments and how long do you get given? 4. How much time do you get given for further reports? 5. Do examiners do classification as an additional duty? If so, how much time do you get? 6. Have you Epoque (the EPO's search software)? If so, how does it compare to the tools you use?

btrettel 4y ago
1. and 2. Depends heavily on the patent classification and seniority. I get around 20-25 hours for a first action, much less for subsequent actions. I'm a newbie, though. Primary examiners in my area probably get only about 10-13 hours for a first action. The time I get is for both search and examination. Comprehensiveness varies and can be independent of whether other offices have done searches. It can be hard to get even two examiners at the same office to agree on what good prior art is. I've inherited applications from an examiner who retired and I didn't always agree with their prior art. I tend to use foreign searches as starting points for my own searches. I'd guess about half the time what I find is the same as the foreign search or comparable but different. Often I find clear deficiencies in foreign searches. The time I get does not change if there are foreign actions. I get so little time that I hesitate to even write the previous sentence in case it gives upper management ideas about where to reduce time... Searching at patent offices is never particularly comprehensive in my experience. If someone wants a comprehensive search, their main option is to do it themselves. 3. I am required to do at least a cursory search after any amendment as far as I'm aware. How detailed the search is varies. See the next point for how much time I get. 4. I get about 4 hours for a final rejection. The US has "after-final" actions as well which can provide up to 3 hours if I recall correctly, but are much more limited in scope and rarely used properly by applicants in my experience. After-final actions should be used mainly to cancel any claims not declared allowable by the examiner, in my opinion. 5. All USPTO examiners have classification as one of their duties now, but they are given very little time for this. The time varies between 0 time, 30 minutes, and 1 hour depending on the results of an approval process. Longer version: The USPTO recently made some significant changes to classification and docketing. Applications are docketed to examiners based on a combination of the CPC and USPC classification now, with the eventual goal of eliminating the USPC component of the docketing system. Here's how it works: Poorly paid contractors classify patent applications. Based on the classification from the contractors, applications are docketed to examiners. Examiners then have the opportunity to correct the classification if it's wrong. As it turns out, poorly paid contractors don't classify well. I'd guess that about 10% of the applications I'm docketed have serious classification issues. The precise number probably varies appreciably between examiners. I will try to correct the classification issues with a process called a C* challenge. This requires approval by examiners called SCEs. The SCEs will check if they agree with the examiner's proposed classification. Sometimes they'll add their own classification, but usually not. The amount of time an examiner gets is zero if none of the changes are approved, 30 minutes if the changes are approved but the changes do not cause the application to be transferred from the examiner, and 1 hour if the changes are approved and the changes cause the application to be transferred. Unfortunately, properly classifying applications frequently takes far longer than 1 hour. This is particularly true when examiners have to classify applications in areas they know little about. I don't bother changing the classification at this point if it seems mostly right because the amount of time I get for correcting the classification is so small. I will only try to correct the classification if it's egregiously wrong. 6. I think I saw some screenshots of the EPO's software once, but I don't really know how it compares to what the USPTO uses. For what it's worth, the USPTO's new public search tool is very similar to the internal tool. The main difference is that the USPTO decided to only include US patent documents in the public version, which is a shame. https://ppubs.uspto.gov/pubwebapp/static/pages/landing.html https://ppubs.uspto.gov/pubwebapp/static/pages/landing.html (Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)

deleted 4y ago

[deleted]

notlukesky 4y ago

What’s the best way to invalidate a patent when you have prior art from years before without lawyers? Or do you have to pay them no matter what?

gota 4y ago
Please don't trust what I'm going to say without checking with a lawyer or someone who actually knows their stuff - You can email the author, I guess. As far as I know patent authors have an eternal duty of disclosing prior art on their own patents. I assume that if you email prior art to the author they have to report it to the USPTO. Not sure if the patent would ever be invalidated though

smeagull 4y ago

That's silly. The incentives need to be flipped. Before the target of a patent suit pays a dollar in court costs the filer needs to pay through the nose proving that the case is worth hearing, with the potential to lose the costs if they fail, before any defense occurs at all.

theGnuMe 4y ago

Do you see AI decreasing your workload? When you look for prior art would something like gpt-3 be useful?

btrettel 4y ago
See this other series of posts I made and the links from them: https://news.ycombinator.com/item?id=33506241 https://news.ycombinator.com/item?id=33506241 I don't see how GPT-3 could be particularly useful for me as it exists now. GPT-3 doesn't know anything about the prior art, so I can't see how it would work there. I think some sort of AI system could be useful for non-prior-art analysis like 101 or 112(b) compliance, but that would need a specially trained system. The data's out there [0]. I think if combined with existing 112(b) analysis software this could be quite useful, but not as useful as something good that finds prior art. [0] https://www.uspto.gov/ip-policy/economic-research/research-datasets/office-action-research-dataset-patents https://www.uspto.gov/ip-policy/economic-research/research-d...

rbanffy 4y ago

> as simply giving examiners more time. Specifically on the prior art search aspect, there should be a bigger burden on the applicant to find meaningful prior art. If the examiner finds something obvious, the application should be deemed fraudulent and carry some stiff penalties.