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: Just a Patent Examiner

Too Much Information

I've been reading the provisions of the Rules Changes. Really, too much there to digest at a single sitting, but maybe in small chunks I'll work through this thing.

One overall impression I've gotten, though, is that much of these rules changes are geared toward shifting work away from the examiners and towards attorneys/agents/applicants. So, of course, I like that, right?

Maybe in general. But not necessarily just because I want to do less work. It seems as if work is being shifted to the applicants in situations where it makes sense to do so, because the applicant is in a position to do it with much less effort and less time than the examiner.

For instance, take the provision that the applicant must identify other pending applications or patents that are commonly owned, have a common inventor, and have a claimed filing or priority date within two months of the claimed filing or application date of the application.

As it stands today, examiners are tasked with identifying related co-pending applications and patents as part of the process of identifying double-patenting situations. We have to do that by searching the patent database, as well as searching PALM for common inventors and assignees. It can be a time consuming process, especially when you're dealing with a prolific inventor, or worse yet, an application with lots of prolific inventors.

It would be very nice to be handed a list of patents/applications to consider candidates for double-patenting. It would save me time. I like that.

I do understand that many large companies have large patent portfolios, and often use multiple law firms to prosecute them. Under these circumstances, it might be problematic for one of those firms to find all of the related patents and applications. But the company itself should be keeping track of that stuff, or so I would think. If you have so many patents, and are prosecuting so many applications, that you can't keep track of them all, there's a problem.

Bear in mind, I'm not saying that applicant's necessarily should have to supply this information to the Office, I'm just saying that

• somebody has got to identify these related applications and patents,
  
• applicants are (or should be) in a better position to identify these patents and applications (they are their applications and patents, after all), so
  
• it makes sense to require the applicant to identify these related applications and patents.
  

I also realize that the Office is not making this requirement to help out the examining corps in identifying candidates for double-patenting. The requirement is being imposed in order to prevent applicants from getting around the new limits on the number of claims in an application. Still, the determination as to which applications have 'patentably indistinct claims' will need to be made (presumably by the examiners), which I assume will be similar to if not the same as the analysis currently performed for double-patenting. Saving me the time and trouble of identifying related patents and applications is something that I appreciate.

Full post as published by Just a Patent Examiner on September 30, 2007 (boomark / email).