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Tuesday Oct 19, 2010

Taking Steps to Improve Patent Quality

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


Last month, I asked both USPTO staff and our external stakeholders to provide input on what USPTO management could do to help examiners conduct high quality examinations. The response was phenomenal and I thank you for your suggestions which covered the gamut from providing examiners with more technical training to enhancing the quality feedback loop by hiring more Quality Assurance Specialists (QAS). We will be exploring many of your suggestions, and where feasible, we will attempt to incorporate them in our business processes.

In the meantime, I wanted to give you an update on a few of our current initiatives that we will continue or launch in FY11. Over the last several months, we have offered refresher training at the Patent Training Academy and covered nearly 20 topics such as prior art, claim interpretation, and search strategy. Based on attendee feedback, we will continue to ensure examiners get the legal and procedural training they need throughout their careers.

As for technical training, I was pleased to have announced our Patent Examiner Technical Training Program on September 15th. This program is designed to provide patent examiners with access to scientists and experts who will share their technical knowledge of the state of the art, prior art and industry standards.

On a parallel path, we have recently announced significant changes to our patent quality measurement methodology. We will begin using these new measures this fiscal year. The new measures include seven aspects of the examination process:

(1) The quality of the action allowing or finally rejecting the application,

(2) The quality of the actions taken during the course of examination,

(3) The use of best search practices in the examiner's initial search for prior art,

(4) The use of best examination practices in the first action on the merits,

(5) Trends in compact and efficient examination as reflected in aggregate USPTO data,

(6) The perceptions of applicants and practitioners as measured by surveys, and

(7) The perceptions of examiners as measured by surveys.

The resultant quality composite metric provides a more comprehensive measurement of quality and will reveal the presence of quality issues arising during the various stages of examination.  This will allow us to address problems by providing appropriate training, as well as to identify and encourage best practices.  

Development of this new metric would not have been possible without the extensive and thoughtful participation of the IP community and the USPTO team.  I’d like to thank all of those who participated in this project, both inside and outside the USPTO, for their efforts in taking a fresh look at measuring examination quality.  And I think this new methodology will take us a long way towards better measurement of examination quality.

Summarizing a comment received from an examiner: quality patent examination comes from 1) understanding the invention and claims; 2) formulating a search that finds the most relevant art; and 3) clearly communicating your position on all aspects of patentability. As we move forward, I am confident we will continue to stress these fundamentals of examination in all of our quality initiatives.


Re "clearly communicating the Examiner's position", I find that the "broadest reasonable interpretation" of a term is the source of much back-and-forth which could be avoided if the Examiner would only point out when she thinks her interpretation might be broader than Applicants', and would then state what her interpretation is. More often than not, I can resolve all issues just by changing the claim term to one that says what I originally meant, but maybe more clearly, thereby satisfying everyone. Interviews are an excellent way to ferret out "broadest reasonable interpretation" issues, and I greatly appreciate the greater enthusiasm I've experienced with Examiners recently in conducting interviews. But what's the harm in pointing out broad interpretations right there in the office action? I *still* find some examiners intentionally "hiding the ball" on interpretations, and cannot fathom what they hope to gain by doing so. Thank you

Posted by ww on October 20, 2010 at 01:51 PM EDT #

Talk about clearly communicating one's position. One Applicant would suggest that patent examination quality could be vastly improved if Examiners were not allowed to make rejections without providing the necessary factual underpinning, only personal opinion. Currently, I have an attorney, who is not a PHOSITA in the subject area, arguing against an Examiner's personal opinion as the examiner is not a PHOSITA in the subject area either. Examination progress stalls and unescessary Applicant cash is consumed when each side is arguing personal opinion only, and not any facts? Perhaps someone can answer this question?

Posted by Harry Taylor on October 23, 2010 at 01:29 PM EDT #

[Trackback] In In re Glatt Air Techniques, Inc., the Federal Circuit reversed a decision of the U.S. Board of Patent Appeals and Interferences that held a claim obvious. The decision is remarkable in that it overturned the Board under the deferential "substantial ...

Posted by PharmaPatents on January 06, 2011 at 04:11 AM EST #

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