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Director's Forum: A Blog from USPTO's Leadership

Friday Sep 03, 2010

Talking Quality

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

 

With this blog I wanted to return to the topic of patent quality.  We talk all the time about how important it is.  There’s no question it is imperative to our agency and our applicants.  We've sought comments from the IP community on this topic, and we've held two roundtable meetings on it, all within the last 9 months.  But what is patent quality? That is, what constitutes a patent that is high in quality?

 

The answer to this question may depend on who you ask.  If you ask an attorney, she may say “A high-quality patent meets all statutory and regulatory requirements and will withstand legal challenges by competitors or other third parties.”  While true, such a description isn’t easy to apply in the examination process.

 

An inventor might say, “A high-quality patent is one that covers the full scope of my invention and no less.”  Well, perhaps that’s a bit more helpful.

 

As I said a number of times last year when we kicked off the joint PPAC-USPTO Quality Taskforce, our historical measurements of quality are long overdue to be revised.  We have concluded the first phase of the Quality Taskforce work, and we are on track to introduce some new quality metrics this coming fiscal year.  You’ll be hearing more about these metrics in the near future.

 

While the above represents good progress, and while our current quality metrics indicate that quality has been improving, I think it is fair to say we all want to do more relative to quality.  So while we continue with efforts stemming from the Quality Taskforce, I'd like to ask about quality from another viewpoint: how do patent examiners think about quality, and especially, what can USPTO management do to ensure that examiners are able to perform the highest quality examinations.

 

I know that IT is a big part of the quality challenge for examiners, and that we need to provide them with better tools to do their jobs.   We’re working on that.

 

Also, I know that quality output is, to a substantial degree, helped by quality input from you, our applicants.  And we look forward to continuing discussions with you in this regard.

 

And of course there is time -- high quality work requires time.  That is why we included increased up-front time for examination when we redesigned the count system last year.

 

Beyond the IT and applicant components, and the time component of quality, what can USPTO management do to help examiners to conduct high quality examinations?  Is more technology training the key?  Would more training on case law be helpful?   More training in search strategies?  Would more access to senior examiners who can help with tough issues be helpful?  Or more time available to SPEs for coaching?  How can our quality review processes change to help them do quality work? What other investments in our examining corps would be worthwhile toward achieving higher quality?

 

I look forward to your feedback and look forward to further discussions on quality over the coming weeks and months.

Comments:

dear mr kappos about two months ago i submitted a suggestion as to how the approved us patents by us citizens could be enhanced by getting the department of commerce and the small business us agency involved in not only assisting the inventors many who are great innovators but lousy business people but also creating jobs for the substantial amount of unemployed people in the usa did you have an opportunity to look at it or have one of your associates check it out i have been on the phone with several of the people associated with the uspto the small business bureau and the department of commerce I have been ignored i guess that is not too unusual I think that you are great in how you are changing the uspto to a well oiled machine congratulations this is not ak ing just recognizing what efforts you are contributing very unusual for one who works for the government bob loganpresident senduzy corp

Posted by Bob Logan on September 04, 2010 at 08:39 PM EDT #

Dear Director Kappos, Congratulations on the amazing work that you have done so far. Here are my tips for improving patent quality: 1. Train new examiners to examine like primaries. Practitioners like myself can immediately tell the difference between OAs by new examiners and primaries. New examiners issue gigantic Office Actions, that object to every technicality, and issue often incomprehensible 103 rejections over 3 or 4 references. Primaries, on the other hand, ignore almost all requirements except the core requirements (102/103/112), and issue brief rejections over 1 or 2 references that are much more on point. In other words, primaries show that new examiners are wasting time on technicalities that are not important to improving patent quality. 2. I would provide continuing education for examiners. Instead of putting examiners in the Academy, and then completely retraining them when they got on the job, allow them to take classes/credits/seminars to sharpen their skills after the Academy. These classes can focus on their technical areas, as well as on BPAI decisions showing when rejections are proper and improper. Ideally, the Examining Corps should be reviewing many or most of the new BPAI decisions issued every week. 3. Create incentives for good patent quality. Examiners are paid a salary as long as they make their counts. However, it is pretty common to see improper rejections overturned, either by the Examiner before appeal, by the Pre-Appeal conference panel, or by the Examiner after the Appeal Brief is filed. Some figures suggest that roughly 90% of appeals fail, including those that never make it to the board. Even if that figure is a little too high, it seems clear to me that there is not enough disincentive for examiners to issue bad rejections. Sometimes these are just called "shotgun" actions - i.e. if the examiner is pressed for time, and just plans on writing a real OA later. Another way to use incentives, is to offer incentives to applicants and examiners to report good and bad examination. That could prompt an investigation, and if the investigation supports the allegation, there could be a modest reward. As scholars have noted, there is a huge variation in examiner quality. The PTO should track who the good examiners are, and who the bad examiners are, including the ones that have poor English skills, and monitor them carefully (and reward the good ones). I have personal experience with one SPE who repeatedly refused to allow virtually any applications, and whose examiners told us so in person, even if the rejections were over 7+ references (and the examiner believed it was allowable). In response, many Japanese clients just abandoned applications, or filed countless RCEs and amendments, because they didn't trust the examiner or the appeal process. Of course, there are difficulties implementing the idea of reporting bad examination. But the general idea is that creating incentives to improve patent quality will affect the Examining Corps. 4. I would work with a software development firm to develop software to automate and streamline a lot of patent prosecution work - i.e. to significantly upgrade PAIR. The software could eliminate a lot of typing/keying errors resulting from sending and scanning lots of paper back and forth. I would be glad to discuss these software development ideas with you more off the public record at your convenience. Kip Werking Reg. No.: 60,187 (757) 645-5281

Posted by Kip Werking on September 05, 2010 at 10:20 PM EDT #

Dear Mr. Kappos, I applaud your efforts. I have been issued 2 patents since 1995 and have a third caught in some young examiner's seem-less web of rejections. Filing as a small entity status and using a local patent firm. I am meeting with my patent attorney this week to tell him that I am going to abandon my third patent application due to second set of office action rejections. The money is better spent on marketing--and this obstacle combined with a 3 year turn around on simple patents? Not worth it for my industry. Initially in the first action--we responded all of the examiners concerns diligently. We have been set a second rejection and it seems as though he didn't even read the response at all! He is stuck on the names of the parts and not the actual function of them. Now I am faced with an RCE. My patent attorney is old school and he is concerned that the young examiners think their job is to reject as many claims as they can--when a decade ago they were helpful and wanted you to get awarded with a quality patent. Listen, I am all for rejections based on real facts and diligent examination--that is what makes our patents stronger. But why do we have to keep paying all these fees when we initially paid fees to have our patents examined in the first place? I am getting the feeling that it a mere money maker when there are rejections. Sincerely, gerald lemanski frustrated, application number: SN 11/799,880

Posted by Gerald Lemanski on March 14, 2011 at 06:32 PM EDT #

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