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Wednesday May 18, 2016

Topics Announced for Case Studies Pilot

Guest blog by Deputy Commissioner for Patent Quality Valencia Martin Wallace

In December 2015, the USPTO published a Federal Register Notice inviting the public to submit patent-quality related topics to be the subjects of case studies in our new Topic Submission for Case Studies Pilot. You enthusiastically responded to our invitation for suggested topics, and I’m pleased to announce that six main topics have been selected.

This pilot is one of several programs that is part of our Enhanced Patent Quality Initiative (EPQI). We defined a USPTO case study as an in-depth examination of applications with respect to a single issue to provide a better understanding of the quality of our work products. Specifically, we use case studies to assist us in formulating best practices to enhance patent quality by improving our patent work products and examination processes, and to identify areas where further examiner training may be needed. Read more in my last guest blog post.

By the time the comment period closed in February 2016, we had received more than 135 qualified case study submissions from 110 requestors, which included intellectual property (IP) organizations, law firms, companies, and individuals.  All the submissions are viewable on our webpage.  

In view of the overwhelming response, we devised a process to systematically identify the most popular topics to be addressed. To begin, we assessed whether the topic was appropriate or capable of being timely assessed via a case study.  After identifying the topics deemed appropriate for study under this pilot, and to avoid duplicating our efforts, we next determined whether other programs or mechanisms within the USPTO were more appropriate for addressing the issue. 

For example, the suggested topic of evaluating the consistency of the application of lack of unity practice in 35 U.S.C. §371 applications is currently being investigated by our Office of International Patent Cooperation, and the submissions requesting review on the frequency and effects of claim interpretation are being evaluated as part of another EPQI program, the Clarity of the Record Pilot. These and other submissions have been forwarded to the appropriate offices for further evaluation.

Finally, we grouped the remaining submissions by subject matter and the following six topics have been selected for the pilot:

1) Evaluation of the deviation of 35 U.S.C. §101 rejections from official guidance, correctness of rejections and completeness of the analysis. This study will evaluate whether examiners are properly making subject matter eligibility rejections under 35 U.S.C. §101 and clearly communicating their reasoning. 

2) Review of consistency of the application of 35 U.S.C. §101 across art units/technology centers. This study will take a look at applications with related technologies located in different art units or technology centers and determine whether similar claims are being treated dissimilarly under 35 U.S.C. §101. 

3) The practice of compact prosecution when 35 U.S.C. §101 rejections are made.  This study will determine whether all appropriate rejections are being made in a first Office action when a subject matter eligibility issue is also identified. 

4) Correctness and clarity of motivation statements in 35 U.S.C. §103 rejections. This study will evaluate whether reasons for combining references set forth in rejections under 35 U.S.C. §103 are being set forth clearly and with correct motivation to combine statements. 

5) Enforcement of 35 U.S.C. §112(a) written description in continuing applications. This study will evaluate claims in continuing applications to determine if they contain subject matter unsupported by an original parent application and whether examiners are appropriately enforcing the requirements of 35 U.S.C. §112(a) written description. 

6) Consistent treatment of claims after the May 2014 35 U.S.C. §112(f) training. This study will determine whether claims invoking 35 U.S.C. §112(f) are being properly interpreted and treated. 

We look forward to sharing more details and updates on the selected studies as we move forward with our data gathering and analysis process. Currently, we project the timing of the studies to be varied, but we expect to publish the results of the first study this summer, and to complete the remaining studies early next year. As each study is concluded, we will post the study’s results on the Topic Submission for Case Studies Pilot webpage. Thank you again for all your great ideas for topics, as your feedback helps us continue to work to enhance patent quality and improve our processes.

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