Anticipate This!™ | Patent and Trademark Law Blog

Absolutely Ridiculous.

Posted in General Commentary by Jake Ward on January 22, 2010

Via the Just-n-Patent Examiner blog, which in turn was relaying an earlier message from Greg Aharonian of the Internet Patent News Service concerning a note that a frustrated attorney had sent to Director Kappos.

Dear Mr. Kappos,

I have been practicing before the USPTO for 12 years now and have seen a lot of ridiculous stuff, but this takes the cake. Note the attached “Notice of Non-Compliant Amendment” and the grounds therefore — the period at the end of claim 1 was accidentally caught in the underline of the word processing selection when indicating the amended language.

Why did I receive this ridiculous response rather than the examiner merely noting it in a substantive response or making an examiner’s amendment to correct it? Because the examiner was apparently unable to prepare a substantive response and wanted to get it off his docket in the required window for his response before incurring PTA and probably a demerit in his performance numbers. (The notice was mailed 3 months and 4 days after our timely filed response.).

What is the impact of such manipulation of the internal system and this type of gamesmanship? Upset customers. My client is upset at the delay and added cost. I am upset at the inanity and the waste of my time — especially when the examiner has his own typographical error in the continuation sheet of the notice: the sentence ends with two periods. But do I have any recourse regarding the examiner’s poor grammar? No. Nor would I want to waste my time doing so. But here I am.

My request: instill some common sense and customer service attributes in the examining corp.

The saga continued, however.  Apparently, Greg Aharonian received some emails from an examiner the next day, the text of which follows:

Greg,

I am guilty as charged. I had to move the case under time pressures and didn’t have the time because I had other things to work on — what I did under the rules is completely legit though I would have wasted a count and thrown away money by the system the PTO set up, not me. Would the lawyer complaining work for free and do pro bono work for one or two cases? I doubt it. I had my counts for end of fiscal yr and didn’t want to waste this one … every count extra to the bonus amount handed at end of fiscal year is wasted money to examiners (but of course, the complaining lawyer has no clue or cares about the whys of it).

She (yes I know her name – the attny) can cry the blues all she wants and criticize my writing and two periods. But I’ve been working at the office for many years and I know exactly who this lawyer is, Ms. Complainer, I know its you. This really upsets me because I thought her a nice person — no more. You know, if I am such a bad guy why didn’t she check her own claims before she sent out the claims without periods. Nope, easy to blame the examiner and cry to the commissioner. I actually helped this woman as much as I could to try and get many applications allowed in many interviews with her (she represents a law firm out of Dallas TX) and a lot of their applications are pretty damn close to [—] patents and I helped her to the fullest I could.

This is so petty and she contacts David Kappos! I am not happy about that at all and thank you for helping me find out something I did not know. I am very pissed off about this now.

I definitely feel like she stabbed me in the back and I was very polite and helpful over the years to her to help her get cases in condition for allowance. I’ll keep that in mind when I examine her cases in the future.

She’s not going to get much any more help from me so her ass is going to be twisting in the wind from now on. I’m also going to email and let her know I’m pissed off about her bringing this up with Kappos. She just jumped off a cliff in my eyes. You know, if she just called me and talked to me I [could] explain exactly what I did that – too late for that lady, you are going to wish you did not do that, believe me, you are going to regret it. She can also forget about an after final interviews — thats at the discretion of the examiner and my discretion from now on will be — no interview.

Good luck writing your future appeal briefs lady and your three year wait from the BPAI. You really should have thought long and hard about sending that to Kappos and not contacting me first.

[Greg note: after sending me the above, the examiner then emailed me:]

I may even email Kappos myself since she sent pushed me under the bus. I am going to let him know that I’ve helped her come to patentable subject matter for years and for her to cry over this is beyond petty and a waste of this busy man’s time.

She’s upset about the “added cost” yet she was the one who made the freaking mistake not putting in periods. Now that is where her mistake should be “pro bono” right — she forgot the periods not me! NO examiner, you dumb ass, its always your fault slave. Any questions?

[Greg note: at this point, I emailed the examiner, and explained to the examiner that he was victim of a coincidence, that the complaining lawyer was not female and not working in Texas, that apparently this type of typographical error resolved via Office Action is common. I asked not to take any action against the lawyer he mistakenly thought to have contacted Kappos. He was glad to do so, and emailed me the following:]

Ok Greg. I’m sorry but I had something exactly to what occured and did the same with the quayle and I often put in two periods by accident just before end of our fiscal yr 09. These attorneys need to realize that its not “all about them”.

Often times its our management here that can be more our adversary than the lawyers and we do our best to expedite and nobody wants to go to the BPAI if we can help it. But if examiners are thrown under the bus, making an examiner your enemy is not a good idea. We can make time more the enemy than we’d ever be and something that could get allowed quickly might take another 3 years or more, who knows. Esp if you stop suggesting what to do.

I’ve had other attorneys go up often to Doll/Dudas and they are usually the “angry kooks” and most management here knows who they are. I recall this one guy you could just feel the anger and seething over the phone, like this guy has got issues. A rare occurence but just like there are weird examiners, there are strange attorneys as well.

Attorneys have to understand that mgmt here will nickel and dime us to death with all sorts of demerits/minus pts even when they are not deserved or you actually did the case on time and unless you watch them you’ll get minus pts hurting your rating and your bonus. That is alot of pressure/stress for examiners.

Every case handed in excess over the set amount for bonus (say 110,120,130) its money thrown down the drain for the examiner. Attorneys get paid by the hour mostly, we do not. If they paid us a set fee for every case, I know this would not happen but often examiners have 40 cases on their amended docket and need to move it somehow. Its not intentional to upset the attorney but if they worked here for a long enough time they would understand its not to spite them but just an examiner in a world of trouble trying to move alot of amendeds. Examiners like to get paid for each case they do and the way the system is set up I totally  [understand] the actions of that examiner.

Some excellent commentary on this entire, ridiculous exchange may be read at Just-n-Patent Examiner blog.  Check it out!

JW Update:  Also covered at Zura’s 271 Patent Blog here.

JW Note:  Wow.  Disturbing.

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