Strategic Plan > Index to Action Papers > Enhance the Reviewable Record

Action:

There is a need to improve the quality of the file wrapper record generated during prosecution with a goal of improving the overall quality of the resulting patent grant.  The completeness of the file wrapper record has become increasingly important in determining the scope of the patent rights granted to a patentee and the quality of the examination process.  Although the current processes produce a file wrapper record that addresses most of the major issues with respect to rejections for failure to meet the conditions for patentability, many of the assumptions made by the examiner and applicant and reasons for various actions taken during the prosecution are left unaddressed in the written record.  This goal of enhancing the reviewable record is best addressed through the creation of additional statements in the record that provide an explanation of the reasons for the various actions that resulted in the patent grant.

Background Information:

When an examiner takes an application up for examination for the first time, the application is reviewed and the examiner formulates numerous assumptions with respect to the disclosed and claimed inventions.  These assumptions are carried forward into the examination process in evaluating the prior art and formulating rejections and requirements.  If the examiner makes an erroneous assumption with respect to the invention, the resulting Office communication may become a totally wasted application of resources by the examiner and result in a response from that applicant that corrects the erroneous assumptions but does little if anything to advance the prosecution of the application.  Further, numerous assumptions made by the examiner may be absent from the file wrapper record, leaving others to only surmise what these might have been; leaving a vague and uncertain record.  Some examples of these assumptions are the scope of various claim limitations, why a claimed invention meets the utility requirements, the content of an interview between the examiner and the applicant, the reasons for the withdrawal of a rejection by the examiner, and the reasons for allowance of a claim.  A process to clarify these issues on the record may frequently result in a better application of the Office resources, a better prosecution, and the creation of a more complete file history.  All business before the Office with respect to the patent prosecution process is required to be conducted on the written record.  See 37 CFR Section 1.2.  However, frequently a number of assumptions are made in that process which are not fully documented in the file wrapper.  The lack of documentation of the assumptions made by the applicant and the examiner during the prosecution lead to ambiguities as to the prosecution and the reasons for various actions that are taken in the process.  These ambiguities frequently result in questions as to the propriety of the examination process.

Options Considered:

Option 1

- The Office could increase the amount of substance included in the interview summary to provide a more detailed record in the file wrapper.  The MPEP 713.04 already required the content of interviews to be made of record, including proposed amendments and the general thrust of the applicant and examiner's arguments, but these summaries are sometimes not as detailed as desired for a more complete reviewable record.

Option 2

- The Office could require the applicant to more fully summarize the content of an interview with the examiner in the next communication with the Office to more fully clarify the positions of both parties.  This would eliminate the ability of the examiner to check the box on the interview summary form saying that no response from applicant is required (e.g., with limited exceptions for allowance requiring the applicant to provide an interview summary).  This is a requirement in the MPEP 713.04. 

Option 3

- The Office could require the examiner to provide an explanation for actions taken during the prosecution; e.g. reasons for dropping a rejection, to provide a one or two sentence explanation to identify what prompted the change in his/her position.  The examiner could point to that part of the argument that was convincing.  This would merely require the examiner to set forth in writing a few brief remarks to capture his/her thinking during the decision-making process of examination.  By requiring an explanation, the record would more clearly show the reasons for changes in patentability determinations.

USPTO Recommended Course of Action:

Details:

Adopt Options 1, 2, and 3 above to provide an enhanced file wrapper record.

Return on Investment:

Estimated benefits:  Presumed to be high in providing a more complete reviewable record of the prosecution history of applications. 

Proof of Concept:

The user community's input will be critical to the determination and evaluation of steps taken to enhance the reviewable record.  As to the substance of the interview, forms which will specify in advance the agenda or topics to be discussed have been developed and will be tested by users and examining staff.  The improvements in the file wrapper quality resulting from the use of such forms also including specific details of the interview substance will be determined jointly with the users.  Additional interview content, as required to be provided by the applicant, will be documented.  Both steps to enhance the record may be evaluated by a side-by-side comparison of the current process with the one proposed involving user representation with examining staff.  Results of the comparison would be reported along with the desirability of form use and emphasis on applicant's requirement to fully summarize interview content.  As to the examiner's explanation for actions taken, a pilot in selected Art Units with follow-up regarding the impact on the overall quality will be needed.  Communication of the results including user evaluation will be a necessary part of process.

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