Tuesday, September 23, 2008

Ta-tah to Quillen/Webster/Lemley?

Just-a-patent-examiner takes a whack at Lemley, James W. Beard, and Quillen/Webster in a 22 Sept. 08 post titled: The 'Wearing Down Examiners' Fallacy.

The 'Wearing Down Examiners' Fallacy post directly tackles some "examiner count" urban legends (aka law review fantasies)-->

Myth: "Examiners are only rewarded for the initial response to a patent application and for finally disposing of an application..."

Wrong. Every time an applicant files an RCE (or a straight continuation), the examiner receives a count for the express abandonment, and another count for the first action after RCE. If they are doing their job right, the examiner will get a count for every single action they write (excluding advisory actions), the abandonment count acting as a 'deferred' count for the final rejection.

Myth: "Disposing of an application requires granting a patent..."

Wrong. Abandonment and appeal will also dispose of an application.

Quillen and Webster don't make out well -->

But really, the debate should be limited to facts, and the tired old 'wearing down examiners' argument is pure fiction (to my experience).

Yet, like a bad penny, this argument has been used again and again in scholarly papers as evidence of the need for continuation reform. (It is somewhat reminiscent of that 97% allowance rate figure that Quillen and Webster came up with in 2002; the figure has been thoroughly debunked [even by the original authors!] yet the figure keeps rearing its head as evidence of the abuse of continuations.)

It is true that Lemley did a 180 between footnote 22 of "Ending Abuse..." and "Rubber Stamp" without offering any explanation for dropping his outrageously wrong position of footnote 22. Quillen, however, never actually recanted, and considers the 97% number to be correct for the assumptions he made. The problem of course is that a footnote in Quillen/Webster acknowledged the assumptions to be wrong.

-->One commenter wrote-->

I want to forward this to Lemley and his acolytes, including Ms. Moore. I do wish that the people who proposed patent policy would have at least minimal patent prosecution experience, on either side of the table. Instead, we get academics who seem to have no idea about the realities of the practice. And for some reason, the political structure of the PTO listens to these folks, and ignores the examiners and the patent prosecutors.


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