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Wednesday Feb 03, 2010

Reengineering the MPEP

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

Ever since I started at the Agency (in fact, even before I started), examiners and practitioners from all over the country have been saying, "You need a major rewrite of the MPEP. And while you're rewriting it, please consider using 21st century authoring and contributing techniques such as those that have enabled collaborative communities to author other important documents using the Internet."

Well I've been mulling over the question of how to improve the MPEP. For starters, I agree that it takes too long to update the MPEP. And like other antiquated IT-based processes at the USPTO that have received public attention recently, it might not surprise you to learn that the authoring and source file environment we use to maintain and change the MPEP is an embarrassment.

So we have yet another IT project to undertake. But the good news is that this one is not extremely complex -- good commercial authoring environments for large monolithic documents having multiple contributors are readily available.

This leaves the question of the substantive process we use to substantially update and improve the MPEP. Do we keep the process within the USPTO, perhaps adding a wiki for use in receiving IP community input as new versions come out?

Or do we open the MPEP development process up to real-time IP community input, so that each successive version is "community created" as much as possible?

And what if any new features do we include in the new MPEP? More examples? Greater integration of guidelines? Links to related USPTO online examiner education materials?

I'd really appreciate your thinking and recommendations. The objective is to create a new MPEP that will enable practitioners and examiners to find information quickly, get accurate and complete guidance, and ensure that all patent applications comply with the laws and regulations governing the patent system.

I look forward to reading your suggestions.

Posted at 12:31PM Feb 03, 2010 in patents | Comments[32]

Comments:

Two suggestion for the MPEP: 1) Examples of cases (or hypotheticals if necessary) that show both sides of a rule. I.e. an example when the term 'about' is indefinite and an example when the term 'about' is not indefinite. 2) Examples when an Examiner's reasons to combine are mere conclusory statements and when they are sufficient to support a prima facie case of obviousness.

Posted by Scott on February 03, 2010 at 03:29 PM EST #

Thanks for the creative thought and openness to new ideas. Real benefits could include (a) rolling, up-to-date revisions incorporating new law (with real-time IP community input) and (b) more depth, as the pool of informed contributors for providing on-point decisions and different viewpoints would be so much broader. If the community believes contributions will appear, I believe you will see a strong response; Wikipedia proves how well this model can work (even if garbage is occasionally posted, it gets corrected and is vastly outweighed by useful info.). Community contributions will not be controlling law, though neither is the USPTO-authored MPEP. Integration of Guidelines and Examiner education materials would also be valuable. For example, on Friday in Cambridge, you mentioned the Examiner Interview Training Materials. I tracked them down on the USPTO site and found them quite helpful. Materials like these should be linked where the topics are discussed in the MPEP.

Posted by Bob Sayre, Modern Times Legal on February 03, 2010 at 10:57 PM EST #

(Continued) It would also be very helpful to both applicants and examiners if case citations in the MPEP included active links to the actual decisions, especially if the decisions were in a citation-friendly format so that we could use a common (and free) form of citation when referencing a case from the MPEP that could also enable an examiner to readily view the language we are citing within the context of the full decision. Finally, this model would provide an intriguing interplay and juxtaposition both (a) between the proprietary rights of patents and open-sourced knowledge and (b) between the government and the people—which could probably make for a compelling article in a publication such as Wired.

Posted by Bob Sayre, Modern Times Legal on February 03, 2010 at 11:03 PM EST #

Mr. Kappos. By trade I am a Technical Writer. We as Tech Writers use several tools to help us accomplish publishing large documents, while publishing over several media, and also keeping the content portable. We use Help Authoring Tools, or HAT's for short. HAT's such as RoboHelp or Madcap Flare are multimedia authoring tools that will publish to print (PDF), Web or other "new" media formats. I can only speak of Adobe RoboHelp, but RoboHalp can actually export a searchable, indexed document to a PDF document, HTML page and AIR application simultaneously using XML and CSS. One source document transformed into multiple formats. RoboHelp is part of the Technical Communicator Suite 2.0 from Adobe. I invite you to take a look at it...by the way I am not a salesman from Adobe. Although the software is expensive, it pales in comparison to the extended cost of hundreds of people searching an archaic, glorified Word Document. Thank you for your time.

Posted by MIke on February 05, 2010 at 09:43 AM EST #

Consider consulting Jimbo Wales, founder of Wikipedia, on the project. Not many have his experience, and this is an important cause. Consider also consulting one of the lawyers who works as an editor for Wikipedia, such as the lawyer who blogged about this experience on the Volokh Conspiracy last year: http://volokh.com/posts/1242444024.shtml This kind of experience might also be very useful for this project.

Posted by Michael F. Martin on February 05, 2010 at 03:54 PM EST #

I would like to see the MPEP be more balanced. Instead of merely providing rationales for rejecting applications, it also should include guidelines for when requirements are satisfied and/or when rejections should be withdrawn, perhaps with examples from Board or Fedeal Circuit decisions. For example, the current MPEP states that Applicant's rebuttal evidence should be considered, but doesn't provide any guidance on what type/quantity/quality of evidence is sufficient to overcome a rejection.

Posted by Courtenay Brinckerhoff on February 06, 2010 at 09:42 AM EST #

This is an awesome idea, Director Kappos! I think a community-driven MPEP would be most helpful to all current and hopeful patent practitioners. I would suggest locking the actual content to preserve some officiality/cannon aspect of the content. However, some sort of discussion, feedback, or other meta content should be available to the public, usable to point out errors and inconsistencies or ask questions not specifically addressed. The official content could then be updated/corrected/clarified to reflect USPTO position on the public comments.

Posted by Josh Collie on February 06, 2010 at 02:04 PM EST #

Please do something about section 800. It is nearly incomprehensible. Some definitions might be helpful. To make a species election requirement, for example, shouldn't it be necessary to identify a genus to which all of the species belong, or does "species" have a different meaning than "a member of a genus?"

Posted by Robert Hayden on February 06, 2010 at 06:04 PM EST #

Speaking as a patent searcher and former examiner it would also be very useful to use wikis for doing revisions to the Patent Classification Schedule. The disorganization and mismanagement of the classification system is a disgrace.

Posted by Blaise Mouttet on February 06, 2010 at 09:25 PM EST #

I am a practitioner living in Canada. The MPEP is one of the least appealing sources for information that I use, all because of the organization of materials. How about the MPEP being a third layer of linked information under electronic versions of the Statute and Regulations. Through the Statute, one would be able to dive through links into the Regulations and MPEP guidance. The process of preparing this material would also guide a firm-handed editing out of the redundancy in the MPEP. Thank you for the opportunity to participate!

Posted by Susan Tees on February 07, 2010 at 10:34 AM EST #

Clearly electronic filing and prosecution is the way to go. But why stop at computerizing the current system ? Why not have patent disclosures (not claims) filed in a grammatical format which computer translation can digest/translate ? Caterpillar has been using just such a system for bulldozer manuals for years and has a soon to expire patent on it. Basically the USPTO should put a tender out for a word processor which would guide and oblige the drafter to input compliant text, like MS Word does with red, green and blue underling, except that it would not allow the author to save until the rules were met. Inventors would save a bundle on subsequent translations, and the reading public would get more intelligible patent text and competitors could search full text with better results. Claims should initially be excluded so as to not limit the legal protection but at least this would prevent inventors from cutting-and-pasting the text of the claims to the Summary of the Invention.

Posted by Mike O'Keeffe on February 07, 2010 at 02:54 PM EST #

Dear Mr. Kappos, In almost 30 years of patent practice, both private and corporate, I have found the MPEP invaluable as a teaching reference and authority. I haven't bought a paper version lately, but have found it very useful for reading sections to get not only specific answers but perspective, context and other angles. Use of the online version only has the same advantages and disadvantages as computerized legal research. While practitioner input could help to produce a better publication, I DO NOT recommend the wiki approach, as it would diminish the perceived reliability and authority of the MPEP. Providing links to USPQ cites (BPAI, TTAB particularly) and use of Federal Reporter cites as available would help; the latter would also be helpful in Office Actions, etc. Many of us find the USPQ inconvenient or expensive to access. Updates to particular sections could be noted at the end of a section. Thanks for seeking our advice!

Posted by James K. Poole, Esq. on February 07, 2010 at 04:19 PM EST #

Certain aspects of this project are well-understood such as browser access to documents and multi-threaded comments. Other aspects are likely to be custom. For example, consider a section of the MPEP discussed by thousands of messages over several years; if the section is updated once per month, new technology would be needed to relate messages to the versions to which they apply. Sayre's suggestion for caselaw citations would probably be a custom feature. A proprietary system will age poorly so keep these non-mission critical tools in the public domain by contracting for modifications from existing open source communities and contributing the extensions back to those communities. Repurpose software code review tools to allow the community to "vote up" suggestions, USPTO reviewers to assign suggestions to committees, and validate that "patches" to the MPEP are properly authorized. I recommend starting small to get something working quickly and to learn from what works well.

Posted by R Kahn on February 07, 2010 at 09:40 PM EST #

Revising a work which has grown over many years demands a careful approach. However, such works tend to to grow and become increasingly complex, and a search for ways of simplifying the text and finding common principles is desirable. As an example the basic requirements for a prima facie case of obviousness in MPEP 2143 include six rationales, five of which are essentially based on whether or not the claimed features lead to predictable results. That common feature has been known as an indicator of patentability since litigation in England in the late eighteenth century concerning James Watt's separate condenser patent. The requirement for a new result has been understood and accepted by US practitioners since the early nineteenth century as recorded by decisions and legal textbooks of that time. It is therefore suggested that unification and simplification of at lest five of the rationales is possible.

Posted by Paul Cole on February 08, 2010 at 08:51 AM EST #

The MPEP is desperately in need of improvement, but let's improve it systematically with a series of experiments. The Supreme Court's Bilski decision will have a profound effect on examining practice in many areas. Perhaps commission three different substantive approaches to address how Bilski is incorporated into the MPEP. I personally would like to see the MPEP include hyperlinks to case law as well as links to commentary by people outside of the Office. The Wiki idea is intriguing and should be tested.

Posted by Don Champagne, Primary Examiner on February 08, 2010 at 09:25 AM EST #

Terrific idea to make use of the wiki concept. Please keep the community authored material separately identified from the official USPTO authored material. Each official MPEP section could have a single link to the corresponding wiki section. Encourage examiners to contribute. A wiki could make us all better.

Posted by Frank H. Foster on February 08, 2010 at 11:42 AM EST #

A well-moderated Wiki would be a wonderful enhancement to the MPEP. In particular, a wiki would give room to ventilate all the debates over policy and precedent ... the moderation could help keep the debate on track by requiring citation to primary references, etc. A wiki also would give practitioners and Examiners opportunity to resolve the relevance of the precedents presently cited in the MPEP ... a good number of those cases (both favoring and disfavoring applicants) are not firmly on-point to the proposition they are asserted to support, and some of the cases that do appear to be on-point actually are cited only for their dicta, not for their core holding. Wiki format would give an opportunity for all parties to improve the process by supplementing the MPEP's very sparse parsing of case law.

Posted by Patent.drafter on February 08, 2010 at 04:10 PM EST #

We need something like a wiki with a deadline to freeze the next revision - something like releasing a new software version every few months. We need a system that accepts meaningful footnotes to current case law. We need a place for persistent comments from practitioners where the comments persist from version to version - but only if accepted by a moderator. The comments would not be part of the official MPEP but could be a source of tutoring practitioners and educating self-filing inventors. We need a moderator for each section of the MPEP, a moderator with real power to authoritatively accept and reject changes. We need to open up each section to comments, have deadlines for a new revision Overall, something that should get simpler over time, not more complex.

Posted by John Meline on February 08, 2010 at 05:43 PM EST #

Great suggestion, David. It would be nice to see a non-authoritative wiki "working draft" of the MPEP to which many more people could contribute. This would reduce workload on USPTO staff and permit more frequent and timely MPEP updates (e.g. the MPEP could see a USPTO-vetted and electronically published update within a few weeks after a major case ruling rather than half a year or more). However, the wiki would suffer many of the same problems as other wikis (edit wars, imbalance, poor sourcing, misinformation, vandalism, content bloat, opinion/POV) and dealing with these issues would require sensitive and judicious administration. (continued...)

Posted by Robert K S on February 09, 2010 at 03:52 PM EST #

(...continued) One solution might be that only registered practitioners would be permitted to edit the wiki, and misconduct on the wiki could then be met with appropriate punitive action, but this would perhaps be too draconian and might not solve all the problems I list. In any case, porting the HTML MPEP to a wiki right away and seeing how well it does for a few months might be a valuable experiment and could be done by anyone in just a day or two.

Posted by Robert K S on February 09, 2010 at 03:52 PM EST #

One longstanding problem with the MPEP has been an inadequate index.

Posted by Paul F. Morgan on February 11, 2010 at 07:30 PM EST #

A logical first step would seem to be for the PTO to first seek input from the patent bar as to which sections of the MPEP need revisions the most. [Such as those relating to restriction practice - see prior AIPLA and other public input on that subject.] Also, requests for identifications of specific errors needing corrections. I agree with others that then it would make more sense for the PTO itself to prepare and publish drafts of revised or new MPEP sections, and to ask for public input on those drafts, instead of some kind of unstructured system. [Especially since prior experience even with proposed RULE changes [other than the massive and disastrous Dudas-era rule proposals] demonstrates that normally a very high percentage of the experienced working patent bar does not react to proposed PTO changes until after they are operative, and/or does not propose workable alternative language.”

Posted by Paul F. Morgan on February 16, 2010 at 12:24 PM EST #

First, the MPEP is impressive for what it does with such vast amounts of information and the guidance that it gives on scenarios that are changing dailey as the law changes. However, like everything changes can always be made. Here it must be broken into 2 parts, 1)implementation and 2)content. Clearly, there is so much new electronic technology that has yet been applied to the MPEP that would improve the style and accessibility of its information. As mentioned by others, hyperlinks, concordances and etc. could make a more useful too. This is the good part of Dir. Kappos's idea.

Posted by bill on February 23, 2010 at 09:48 AM EST #

However, the content of MPEP is actually impressive and should reamin exclusively set by PTO. While it can lag behind, this is more a factor how fast legal issues are changing and courts offering little guidance in their decisions. Too often, the MPEP is in limbo as we wait for a next more guiding decisions from the Courts. The years from business methods, to State Street, to Bilski, is a good example. The bad part of Dir's idea is to consider "authoring and contributing techniques such as those that have enabled collaborative communities to author". It is not the Manual of the Patent Bar or the Prolific Inventor. It is for Examining Procedure, which is critical to the function of the PTO to protect the public domain, maintain quality opinions and promote efficiency examination. The PTO that must set policy and procedure...not the bar, attorney, inventors or some collaborative community. In short, while help from others with the style and design and providing an easy submission for feedback for consideration from within the patent community can be a good idea, the overall content of MPEP should remain exclusively a function of the PTO, who guards all areas of the public interest, and not those that benefit exclusively one group or another.

Posted by bill on February 23, 2010 at 09:54 AM EST #

While it can lag behind, this is more a factor how fast legal issues are changing and courts offering little guidance in their decisions. Too often, the MPEP is in limbo as we wait for a next more guiding decisions from the Courts. The years from business methods, to State Street, to Bilski, is a good example. The bad part of Dir's idea is to consider "authoring and contributing techniques such as those that have enabled collaborative communities to author". It is not the Manual of the Patent Bar or the Prolific Inventor. It is for Examining Procedure, which is critical to the function of the PTO to protect the public domain, maintain quality opinions and promote efficiency examination.

Posted by bill on February 23, 2010 at 09:57 AM EST #

The PTO that must set policy and procedure...not the bar, attorney, inventors or some collaborative community. In short, while help from others with the style and design and providing an easy submission for feedback for consideration from within the patent community can be a good idea, the overall content of MPEP should remain exclusively a function of the PTO, who guards all areas of the public interest, and not those that benefit exclusively one group or another.

Posted by bill on February 23, 2010 at 09:57 AM EST #

I have not checked if the MPEP addresses internal assignment of applications for examination. I believe that prosecution time can signficantly be reduced if one examiner handles an entire patent family (i.e., parent, continuations, divisionals). All too often different examiners handle different members of a family and too much work is repeated. There should be more tranfers of applications to one examiner when related applications are assigned to different examiners.

Posted by Adam on March 02, 2010 at 09:27 AM EST #

The question is how to let the examiners and applicants quickly find the right information. In addition to the hyperlinks, concordances, etc, I wish a comment section could be added to every page of the MPEP. The comment section could be further divided into official subsection and non-official subsection. The official sub-section is for the purpose of providing clear guidelines/comments by PTO (This will show the Office has the ability to apply the rules and regulations, and not to confuse the readers). This could be in an interactive format ( e.g. Q&A in real or non-real time) I would also like to see a "What to do if…" section be added to MPEP. This would be like a more improved version of the Index section at the end of the existing MPEP integrated with the situations similar to the questions of the patent agent or certificate examination. I believe we are the generation that leads innovations and creates patent history.

Posted by DP on March 22, 2010 at 04:02 PM EDT #

Since the MPEP is an outgrowth of the Patent Laws and Rules and the Agency's administration thereof, the MPEP is not the kind of document that should be exposed to arbitrary change by the "collaborative community" - it is not a "wiki." Any changes or updates to the MPEP should be conservatively approached and carefully considered. The MPEP must reflect the current state of the law both in accurately reflecting the latest statutory and rules language and in accurately reflecting the current state of agency interpretation of those laws and rules from an examination standpoint. The MPEP should be changed only when PTO operation has been stabilized to the point where the MPEP can serve its intended purpose to accurately show the procedure by which examination is being conducted.

Posted by Robert L Scott on April 02, 2010 at 03:59 PM EDT #

Posted by nfg on April 04, 2010 at 11:08 AM EDT #

Posted by Jeremy Bivins on July 27, 2010 at 06:39 PM EDT #

Posted by sharkaz on December 20, 2010 at 05:02 PM EST #