Remarks by Director Michelle K. Lee at the Patent Quality Conference Keynote

Director of the USPTO Michelle K. Lee

December 13, 2016

Patent Quality Conference Keynote

Thank you, Valencia. And good morning, everyone. Welcome to the United States Patent and Trademark Office. It’s a pleasure to have you here today.  Great to see such a wide cross-section of the IP community in attendance. We have prosecutors, litigators, in-house counsel, judges, economists, academics, and examiners participating today. And we have representatives from across the technology landscape as well as from across the country (including from our four regional offices in Dallas, Denver, Detroit and the Silicon Valley). We truly have an audience of diverse perspectives here with us, and that’s exactly as it should be, given the importance of patents and patent quality to our nation, our economy, and our future.

My team and I launched the EPQI at the beginning of 2015. With our backlog and pendency numbers on their way to being reduced by almost one third since their all-time highs at the start of the administration, with the greater financial security enjoyed by the agency as a result of the fee setting authority granted by the AIA, and in recognition of the need  for patent owners to have greater certainty in their patent rights, and for the courts and innovators to have greater clarity of a patent’s boundaries to make informed decisions, the timing was (and is) right for the agency to focus in a concerted and comprehensive manner on improving the quality of patents issued.

One of the first things I did, working with the Commissioner for Patents, was create a new executive position, the Deputy Commissioner for Patent Quality, filled by Valencia Martin-Wallace, who then established an entire department within the Patents organization focused exclusively on patent quality. These two steps – creating an executive leadership position within Patents along with an interdisciplinary team under her—ensured that the USPTO is staffed and resourced to focus on improving patent quality now and in the long run. This is important as any organization that produces a quality product needs to focus on quality for years, if not decades.

Next, my team held a two-day, first-ever Patent Quality Summit in March 2015, attended by over 1,500 patent prosecutors, litigators, in-house counsel, former jurists, academics and examiners. We discussed anything and everything the agency could do to enhance patent quality: From big to small, from changes to examination procedures to IT improvements, from how we measure patent quality to how we conduct prior art searches. We also sought your input in the form of requests for comments on what the USPTO could do to further enhance patent quality. And, importantly, we met with our examiners to solicit their ideas. Based on all this input, we identified about a dozen initiatives to focus on initially, which we shared with you at our Patent Symposium on April 27 of this year, attended by more than 2,200 participants, again including many of you. We sought your written feedback on these dozen or so initiatives with another round of request for comments. Now, after working on these initiatives and listening to your input, we are pleased to provide you with an update on the status of each initiative, the results achieved to date, and next steps moving forward. Our efforts on the EPQI have truly been collaborative, and I thank you for your input and partnership. This is an important priority for the USPTO. We recognize that more work remains to be done, and the USPTO team is excited to carry forward this priority, working together with all of you.

With that, let me give you a sneak preview of what is to come during today’s program. But first, I think it’s important that we step back and remind ourselves of the common goal we are all striving toward -- through EPQI. That is, issuing patents that are 1) correct in accordance with the law, 2) clear in providing notice to the public of the patent’s boundaries, and that are 3) issued consistently across the Patent Examination Corps. There is a cost to society when the USPTO issues a patent that should not issue, just as there is a cost to society when we don’t issue a patent that should issue. With patents that are overly broad or vague, we create inefficiencies and opportunities for abuse. With patents that are unduly narrow, we discourage incentives to innovate. At a time when IP is more important to our economy than ever before, neither is an option, we have to get this right.

And that starts with making sure we are getting the most relevant prior art before our examiners as early as possible, which we are doing under our EPQI by: 1) leveraging technology, 2) making prior art cited in our PTAB proceedings available to the examiner handling a related pending child application, and 3) transitioning our entire patent examination corps from the decades old, antiquated U.S. Patent Classification System to the updated, increasingly global Cooperative Patent Classification System. It also means investment and use of tools like Global Dossier—an online portal developed in conjunction with our IP5 partners that provides all examiners and the public access to file history information to all applications that may be filed in an IP5 office. Global Dossier improves patent quality worldwide because examiners and the public can access prior art references found by other patent offices more efficiently and earlier.

Getting it right also includes drilling down on best practices. One of the efforts under our EQPI is the “Clarity of the Record Program”, which Robin will be speaking about at greater length next. The goal of this initiative is to develop best practices on how much detail to include in certain key parts of the prosecution record, for example: Interview summaries, or reasons for allowance, or claim constructions. After the pilot concluded, we measured 22 data points focused on clarity in interview summaries, and found an average of 15% improvement in clarity between the pilot and control groups. And we found a 25% improvement in the clarity of reasons for allowance between the pilot and control groups. With our trainings on 1) interview summaries, 2) reasons for allowance and 3) claim interpretations, we saw a statistically significant improvement in clarity when examiners used the best practices we identified.

Perhaps the most telling indicator of progress is that when the pilot examiners were examining applications not included in the pilot program, they continued to apply the pilot’s best practices. This is a strong indication that our training is working. Following Robin, Greg will talk to you briefly about our Automated Search Pre-Examination Initiative. As I said earlier, we want to make sure we’re getting the most relevant prior art before our examiners as early as possible, by leveraging state-of-the-art search technologies. This past July, we awarded a contract to AI Patents to begin developing a new automated search system. We have begun testing the system they developed, and that we hope will eventually allow automated searching of prior art based upon the entire specifications and not just the claim language. We will continue to collect and evaluate data from this initial testing and will further refine this very exciting new tool that could be of significant assistance to our examiners and applicants going forward.

We’re also developing new and better ways to measure our progress, for example using our Master Review Form and new Quality Metrics. The goal of the Master Review Form is to have a single, comprehensive form used by all in the Office to review both the accuracy and clarity of patent work products and record the data electronically to identify trends and patterns. Now fully implemented, the MRF allows us to gather between three to five times more data points on the quality of our work product. This in turn will permit us to use big data analytic techniques to more accurately identify trends and areas for improvement, and to provide targeted additional training as needed. This will help increase consistency of our work product across our examination corps. MRF reviews are increasing, as you’ll see in Marty’s presentation. Marty will also be sharing our progress in seeking input from the public through surveys so we can double check that the data and conclusions we are drawing are consistent with what you are seeing in our work product. 

A final EPQI program I’ll mention from today’s agenda is our Topic Submission for Case Studies Pilot. A year ago, you may recall, we published a Federal Register Notice inviting you to submit patent-quality related topics to be the subjects of case studies for further investigation. We received 135 suggestions from 110 requestors. Of the six we selected, we have completed three and expect to complete the remaining three by March. These studies help us identify areas for improvement and give us vital information to improve the patenting process. Today we will share with you the results we have so far, and as we continue completing the other case studies, we will post the results on the Case Studies Pilot webpage, so stay tuned.

Turning to the subject of other presentations and panels later in the day: We will hear the views of practitioners and different industry representatives on patent quality in the USPTO, we will hear from a number of distinguished jurists on the impact of patent quality on the Courts, we will hear how our international collaborations with foreign counterpart offices are improving the quality of issued patents, and lastly, we will have a conversation about what applicants can do to help the USPTO with its efforts.

At the conclusion of today’s meeting, Commissioner for Patents Drew Hirshfeld will discuss next steps in the EPQI effort.  While some of us won’t be here with you next year, as these initiatives and others continue to move forward. I want to assure you that the focus on enhancing patent quality at the USPTO is here to stay. Drew, Valencia, and others will be working hard to keep this snowball moving forward and growing—if you’ll pardon the seasonal analogy—and they look forward to doing it in partnership with all of you. Stakeholder input and collaboration from around the country—and indeed, from around the world, including with our counterpart offices overseas—will continue to be vital to our efforts.

So let me just say what a privilege it has been to work with all of you these past few years, on this most important and worthy effort. It truly is a movement, in the best sense of the word. To paraphrase Dr. Martin Luther King, progress is neither automatic nor inevitable.  It requires the tireless exertions and passionate concern of dedicated individuals. Individuals like you, who have been there every step of the way, helping us improve patent quality for the benefit of all. So thank you again, and I look forward to the listening to discussions and input today. Thank you.


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