This past Monday the Senate officially confirmed Michelle Lee as the new director of the US PTO. Director Lee is the first woman director of the agency, and previously served as Google’s chief patent counsel. Since beginning her tenure at the US PTO, Director Lee has set her primary focus on improving patent quality in the US patent system. In line with this patent quality initiative, the US PTO has set forth six (6) proposals to serve as the focal points for the upcoming Patent Quality Summit on March 25-26, 2015.
The six proposals below are based on the “three pillars” for enhancing patent quality set forth by the current administration, and generally highlight (1) excellence in work products, (2) excellence in measuring patent quality, and (3) excellence in customer service. Our comments are below in italics.
Proposal 1: Applicant Requests for Prosecution Review of Selected Applications – The USPTO proposes a mechanism for an applicant to request OPQA (Office of Patent Quality Assurance) review of the prosecution of a particular application where the applicant identifies an issue that would benefit from further review. In other words, this would provide an applicant another, more informal mechanism, for reviewing a low quality Office Action without resorting to an appeal or RCE.
Proposal 2: Automated Pre-Examination Search – The USPTO is seeking input on new tools as well as their usefulness in conducting a pre-examination search that will provide a list of possible references for the examiner’s consideration. With these references as a starting point, the examiner is better positioned to begin a substantive examination, which includes their own search of the prior art. One major bottleneck in patent quality is the limited searching capabilities and time allowed for an Examiner. By leveraging better IT tools (and perhaps Lee’s former connections at Google), better internal search tools or algorithms may increase the rate of capture of relevant prior art which should extend beyond just the patent references in the US PTO database.
Proposal 3: Clarity of Record – The USPTO is seeking the assistance of the public in identifying procedures to enhance the clarity and completeness of the official record during prosecution of an application. The US PTO Patent Application Information Retrieval (PAIR) system is a drastic improvements from the analog days of old; however prosecution history should be text searchable, machine readable, and include telephone or meeting transcripts with the examiner, as well as provide rationales for each office action and examiner’s amendment (for instance, at the present we tend to encounter opaque amendments as a result of a nondescript examiner interview, but why was this application suddenly allowed? It’s at times not so clear from the record). Of course, clarity and fullness of record is a prosecution attorney’s nightmare and a defense litigator’s dream.
Proposal 4: Review of and Improvements to Quality Metrics – The USPTO is considering the Quality Composite Metric it currently uses to evaluate quality – to reassess its effectiveness as well as consider ways to improve it. Moreover, methods for measuring the impact of training provided to examiners will be reevaluated to enhance the effectiveness of examiner training. How does one measure the quality of a patent and assess the performance of a patent examiner and the overall system? From how well it stands up to litigation or post-grant proceedings?
Proposal 5: Review of Current Compact Prosecution Model and the Effect on Quality – The USPTO requests assistance from the public on determining whether the current compact prosecution model should be modified and seeks ideas for proactive alternatives to RCE (Request for Continued Examination) filings and appeals to the PTAB (Patent Trial and Appeal Board). The US PTO is concerned about the sheer amount of cases resulting in a RCE or appeal; however, this unavoidable result goes to the nature of patent prosecution. which in essence is a battle of attrition between the applicant and the US PTO. The ability to reach issuance or abandonment more quickly depends on how well the Examiner can search and match prior art, not only for the outstanding claims, but also for the pages of descriptions that may make their way into the claims in subsequent amendments. In order to really compact prosecution, the US PTO needs to set restrictions on the number of amendment claims that can be added in aggregate after the initial filing, in order to put the onus on the applicant to laser-focus his or her invention at the outset. However, by requiring such a handicap the US PTO needs to compensate with an equally enticing incentive to convince applicants to pursue compact prosecution.
Proposal 6: In-Person Interview Capability with All Examiners – Today, in-person interviews are only available at the USPTO Headquarters in Alexandria, VA and fully operational USPTO Satellite Offices (Detroit and Denver). The USPTO proposes that in-person interviews could be conducted at additional locations to those currently available. In-person interviews provide a better opportunity to clarify the invention and to have a candid discussion on what may be allowable. From our experience, in-person and telephonic interviews have been drastically more efficient than merely lodging repeated amendments on the record.