Pillar I: Excellence in Work Product
American Chemical Society (ACS)
The American Chemical Society (ACS) supports Proposal 1 under Pillar 1 since it helps bring issues to the Office of Patent Quality Assurance as they arise during examination. It supports Proposal 5 under Pillar 3 because it allows applicants to resolve or reduce issues before costly appeal or prosecution through Requests for Continued Examination. ACS also supports Proposal 6 under Pillar 3 because it expands opportunities for in-person examiner interviews. ACS points out some problems specific to patent applications in chemistry; for instance, examiners sometimes ignore the sequence of reactions or level of detail while reviewing prior art for the nonobviousness test, leading to improper rejections. In order to ensure consistency, fairness, and quality of examinations, ACS suggests supervising examiners, providing them technical instructions, giving them additional time to review every application, and using their existing performance data to track them.
American Intellectual Property Law Association (AIPLA)
The American Intellectual Property Law Association (AIPLA) comments on all three of the PTO Pillars and the six proposals thereunder. The AIPLA suggests certain modifications that would make the process for requesting prosecution reviews more effective, such as publicizing how and when review applications are selected from the larger pool. Further, the AIPLA advocates certain changes to the automated pre-examination search, such as expanding the search algorithms of the Patent Linguistic Utility Service (PLUS) tool, considering corresponding applications in Foreign Offices, and allowing public access to search results for a fee. As for improving excellence in measuring patent quality, the AIPLA is concerned that the current metric is more directed towards improving production than quality, and provides alternative performance metrics that should be measured. Lastly, the AIPLA applauds the PTO’s efforts to increase access to in-person interviews with examiners. The AIPLA sees this as the most effective way of increasing both excellence in patent quality and improving communication between examiners and applicants. The comment also proposes other changes to existing procedure to improve efficiency and effectiveness of the examination process.
Chartered Institute of Patent Attorneys (CIPA)
This UK-based attorney organization is guardedly supportive of the Pillar 1 proposals for applicant requests for review and for greater usage of automated searches of prior art. It warns that the side effects of enhancing the clarity of prosecution records by making them more detailed could backfire by making prosecution more complex and and foreclosing accurate judicial claim construction; in the alternative, it observes that PTO records could be made significantly more transparent simply by making its databases more integrated and user-friendly. It criticizes of the PTO’s numbers-driven approach to quality, stating that Pillars 2 and 3 cannot be achieved unless examiners and reviewers are given more time to do their jobs diligently. Beyond the Pillars, it notes that quality could be enhanced by making better use of the international Common Citation Document and by broadening third parties’ opportunities to comment on pending applications.
Coalition for Patent and Trademark Information Dissemination (CPTID)
The Coalition for Patent and Trademark Information Dissemination (CPTIP) comments on Proposal 2 (Automated Pre-Examination Search) and Proposal 3 (Clarity of the Record) under Pillar I and Proposal 4 (Review of and Improvement to Quality Metrics) under Pillar II. The CPTIP does not support the PTO’s proposal to provide examiners with automatic pre-examination search tools, fearing that over-reliance on an automatic search will decrease patent quality because it will discourage examiners from conducting their own detailed manual searches. If the proposal is to be implemented, the CPTIP recommends using private sector tools, ensuring data quality, and public access. For Proposals 3 and 4, the CPTIP suggests enhancing quality checks of applicant inputs, maintaining the publication process, using tools to quantify variations in examiner performance, correcting published patent text, enriching metadata through enhanced content tagging, and retaining consistency of published content.
Electronic Frontier Foundation (EFF);
The Electronic Frontier Foundation (EFF), Engine Advocacy, and Public Knowledge propose an additional pillar in the PTO proposals, called “”Excellence to the Public.”” First, the EFF suggests that treating patent applicants as “”customers”” and promoting better “”customer service”” fails to reflect the true public service role of patent examiners. Low quality, overbroad patents pose a threat to innovation through the legal costs required to invalidate illegitimate claims. The EFF advocates defining patents in public interest terms and applying more stringent patent requirements. In relation to Proposal 1 under Pillar 1, the EFF suggests there should be a greater focus on reducing the error rate regarding allowances. For Proposal 2, the EFF addresses concerns such as over-reliance on and manipulation of automated search tools. The EFF supports Proposal 3, asserting that explicit claim construction, recordation of examiner interviews, and statements outlining the reasons for allowance should be adopted. For Proposal 4 under Pillar 2, the EFF proposes shifting the focus of patent quality metrics from process quality to output quality, and proposes two new metrics. In relation to Proposal 5 under Pillar 3, the EFF proposes greater flexibility and increased time in the compact prosecution model. Lastly, for Proposal 6, the EFF advocates expansion of examiner interviews, so long as these interviews are properly documented and all relevant presentations are filed.
Federal Circuit Bar Association (FCBA)
The Federal Circuit Bar Association (FCBA) suggests methods to improve certainty and clarity in patent rights. It claims “reasons for allowance” (see MPEP 1302.14) further confuse, rather than clarify, the final record. It suggests that clarity should be achieved through examiner training and a better initial search for prior art. Further, claim construction and communication with applicants about material terms should be made of record. The comment emphasizes the importance of an unambiguous and accurate examination record.
Intellectual Property Owners Association (IPO)
The IPO addresses all six of the PTO’s proposals. Proposal 1 under Pillar 1 (prosecution review of selected applications) – This could be implemented via a combination of formal and informal procedures for requesting review. Proposal 2 under Pillar 1 (automated pre-examination search) – For these searches, examiners should have access to a modern search interface and a wide variety of prior art. The public should have access to the same search tool, so that applicants can identify prior art before filing applications. Proposal 3 under Pillar 1 (clarity of the record) – Clarity is a laudable goal, and interactions such as interviews should be recorded more carefully. But the IPO urges caution, because unreasonable expectations of claim specificity could impose too great a burden on applicants. Proposal 4 under Pillar 2 (quality metric) – The IPO offers several specific suggestions for tweaking the metric. It also uses the PTO to use quality metrics to gauge the effectiveness of examiner training. Proposal 5 under Pillar 3 (review of the prosecution model) – Final rejections create an unnecessary “artificial pause” in the prosecution process and should be eliminated. A second non-final office action is a good idea, but should be available without an additional fee. Proposal 6 under Pillar 3 (interviews) – Enhanced availability of in-person interviews would be helpful because effective communication sometimes requires in-person contact.
The Internet Association is particularly enthusiastic about the PTO’s proposal regarding clarifying examination records (Proposal 3 under Pillar 1) and views this as a mechanism to identify and appropriately limit functional claiming in software patent applications. It also supports the PTO’s plans to automate pre-examination searches (Proposal 2 under Pillar 1), revise patent quality metrics (Proposal 4 under Pillar 2), and review the current prosecution model (Proposal 5 under Pillar 3), but argues that the PTO should do even more than proposed on these fronts. However, it is opposed to the proposal to enable mid-examination review (Proposal 1 under Pillar 1).
New York Intellectual Property Law Association (NYIPLA)
The NYIPLA proposes that third parties be allowed to make more detailed comments when submitting prior art relating to a pending application. It also offers feedback on each one of the PTO’s proposals: Proposal 1 under Pillar 1 (prosecution review of selected applications) – Review of applications by the Office of Patent Quality Assurance (OPQA) department would be beneficial, but the OPQA is too thinly staffed to make much of an impact. The NYIPLA is curious how the OPQA would select which applications to review. Proposal 2 under Pillar 1 (automated pre-examination search) – Automated searches could have benefits, but the PTO must be careful that examiners do not rely on such searches to the exclusion of making a more thorough manual search. Proposal 3 under Pillar 1 (clarity of the record) – It would be unduly burdensome to explicitly define every claim to the level of detail envisioned in the PTO’s proposal. Interview summaries need not be as detailed as the PTO proposes. Nonetheless, the records generated at the end of an examination should be more detailed than they are currently. Proposal 4 under Pillar 2 (quality metric) – The composite metric may be beneficial for internal USPTO use, but it is confusing for practitioners. Proposal 5 under Pillar 3 (review of the prosecution model) – A second non-final office action is a good idea, but should be available without an additional fee. Proposal 6 under Pillar 3 (interviews) – More interviews are good, but due to expense and logistical concerns, in-person interviews are not always feasible. Telephone and videoconference interviews should also be available.
Software & Information Industry Association (SIIA)
Software & Information Industry Association (SIIA) believes that the issuance of high quality patents is critical to an effective patent system and should be the primary goal of the PTO. To this end, SIIA suggests that applicants be required to clearly define the scope of their patent claims, as well as identify and define key claim terms. It recommends that the PTO improve the frequency and focus of the training programs presently offered to examiners. The PTO should digitize prior art and make it publicly available, and continue to provide examiners with manual search tools. To improve quality metrics, the PTO should assess rejections and overcoming of rejections in each art unit. SIIA also recommends using advanced text analytic tools to identify applicant-generated errors, which would be aided by the technologies of commercial providers like LexisNexis and Thompson Reuters. SIIA believes that quality consideration should prevail over compact prosecution. Finally, SIIA believes that video interviews are an acceptable alternative to in-person interviews.
U.S. Section of FICPI (International Federation of Intellectual Property Attorneys)
This comment addresses all of the PTO proposals. First, the comment suggests that prosecution review by the Office of Patent Quality Assurance should be limited to applicants or practitioners with standing in the application; third parties should not be allowed to participate in this program. Second, the comment supports an automated pre-examination search. Third, the comment finds that a prosecution record that includes a more extensive and legally correct claim construction analysis by the examiner would be beneficial to applicants and the public; however, recording of examiner interviews is discouraged. Fourth, the comment recommends improving the Quality Composite Metric and finding ways to enhance examiner training. Fifth, it suggests that the finality of the second Office Action severely limits the applicant’s ability to reply to the examiner’s response to amended claims, and necessitates RCEs; it suggests providing an option for applicants to convert the final Office Action into a nonfinal Action, perhaps for a fee. Lastly, the comment finds that applicants would benefit from a more flexible system of in-person interviews that allows for more interaction with the examiner.
United Inventors’ Association of America (UIA)
The United Inventors Association of America (UIA) supports Proposal 2 of Pillar 1 and recommends its expansion. As an initial step, the UIA proposes a pilot program granting independent inventors online access to the Automated Pre-Examination Search (APEx) so that applicants can evaluate and improve their patent applications before filing. This will help improve patent quality, generate extensive prior art disclosures, promote communication between inventors and examiners, and save examiners resources. Ultimately, the UIA proposes that the USPTO make the APEx system freely accessible online to the public, which will foster innovation, public engagement, and openness.
Federal Trade Commission (FTC);
Department of Justice (DOJ)
The Federal Trade Commission (FTC) and the Department of Justice (DOJ) believe that certainty and validity regarding the scope of granted patents is essential to promoting competition, innovation, and consumer welfare. They support the proposal to expand the scope of review by the Office of Patent Quality Assurance (OPQA), as additional oversight can help enhance PTO’s institutional knowledge by identifying issues during the examination process that challenge patent examiners. Second, the FTC and DOJ are in favor of providing examiners with access to improved, automated, pre-examination prior art searches. Finally, the FTC and DOJ support making claim construction explicit in the prosecution record, including further detail when examiners record interviews with applicants, and improving examiner use of statements of reasons for allowance.
Askeladden proposes several extensions of the PTO’s proposals: (A) improve the search tools used by examiners by expanding and consolidating the library of prior art into a single interface, allowing the public to upload new literature to the database, and using modern search algorithms; (B) continue to enhance examiner education; (B) give examiners more time and count system credit to review prior art following an unusually large or untimely information disclosure statement; (C) allow third parties to make preissuance prior art submissions and give examiners the time and count credit to review these submissions; and (D) track quality metrics over time to assess the success of implemented initiatives. Askeladden also notes its approval of increasing clarity of the record (Proposal 3 under Pillar 1), observing that such clarity will give applicants the chance to timely remedy misunderstandings and will inform future litigation.
Cisco Systems, Inc.;
Under Pillar 1, Google and Cisco suggest that the PTO revise the count system, focus performance appraisals on quality, and monitor granting of signatory authority. The PTO should strictly enforce Section 112 by requiring applicants to define key claim terms, enforcing the enablement and written description requirements, and by combating gamesmanship in continuation applications. Further, application of Section 103 should be improved through increased obviousness training and use of PTAB proceedings as guidance. PTO should also require applicants to fully distinguish the prior art while itself providing more clarity on the art of record and consistent evaluation of preissuance submissions. Proposal 1 would be an inefficient use of resources, whose goals may be better realized through an expansion of the Ombudsman Program. An automated pre-examination search could effectively supplement the examiner’s full search, and utilize Google Prior Art Finder. Under Pillar 2, the commenters suggest that the PTO provide total data transparency by coding all examination activity and using this data to perform a quality audit. Under Pillar 3, the commenters suggest that the PTO provide negotiations training to patent examiners, replace final rejections and RCEs with a limited number of multiple Office actions, and record interviews.
Emphasizing that it is a frequent target of trolls, Dell is enthusiastic about all three Pillars. It particularly supports using search automation to improve efficiency (Pillar 1), collecting more detailed “art area”-level data on examination processes (Pillar 2), and giving applicants more opportunities to interact directly with examiners (Pillar 3).
IBM’s comment addresses all six PTO proposals. With regard to work product, IBM proposes opening the Office of Patent Quality Assurance (OPQA) to review Section 101 rejections to ensure well-reasoned rejections. It also proposes expanding the pre-examination search to include non-patent references, alongside analytics to narrow the relevance of the results. Third, IBM supports making explicit claim construction early on in the prosecution, and ensuring informal conversations do not become crucial parts of the record, to avoid accidentally narrowing claims or getting adverse construction. Lastly, IBM suggests clarifying reasons for allowances. With regard to quality, IBM proposes using clear and publicly available metrics of quality, and giving public access to data points such as grounds for rejection and inclusion of data points on reasons for rejections. With regard to customer service, the PTO should limit the available number of non-final office actions or increase the fee after the second non-final office action to encourage quicker resolution of patent issues. Lastly, the PTO should provide more detail on the capacity of examiners to conduct interviews.
The Innovation Alliance (IA) is a coalition of R&D focused companies; its comments address each of the six PTO proposals in turn. IA believes Proposal 1 has merit, and urges consideration on whether applicants should identify more specific issues forming the basis of the review request. IA also raises concerns with making the review part of the public record. For Proposal 2, IA supports improving the search functionality of examiners, but set out some technical criteria for selecting such an automation system. As for Proposal 3, IA opposes mandating explicit claim construction in the record because it could potentially decrease clarity and increase costs. In its comment, it details significant issues with this portion of the proposal. IA also opposes recording examiner interviews, believing that both examiners and applicants would be reluctant to have a complete record. With Proposal 4, IA supports improving quality metrics, as long as they accurately reflect work product quality. In relation to Proposal 5, IA supports allowing applicants to pay for an additional Office Action, but urges fair consideration of a broad range of proposed concepts. Lastly, for Proposal 6, IA believes allowing off-site interviews with examiners merits consideration, but is concerned with procedural aspects such as confidentiality, examiner safety, and the costs and inconveniences of travel.
Regarding Proposal 2, Intel suggests high algorithmic weighting to references submitted in Information Disclosure Statements. Intel supports Proposal 3 as a means of combating vague, indefinite patents and abusive litigation, and recommends further expansion of interview records. The PTO should record not only arguments that overcome a rejection, but also those that fail to overcome a rejection. Intel also supports a strong enforcement of Section 112. Under Proposal 5, Intel suggests a new quality-driven, not a quantity-driven, count system that rewards examiners whose rejections are affirmed by the PTAB.
Mozilla expresses concern that the PTO’s proposals focus too much on the “process” of patent examination, at the expense of the substance (i.e., the output of patent examination). It provides suggestions on effectively improving patent quality by reforming process, substance, and scope. Mozilla applauds Proposals 2 (pre-examination search) and 3 (clarity of the record) under Pillar 1 for promising substantive improvements, but warns that neither goes far enough. As for Proposal 2, it recommends that the PTO use a peer review board of open source software developers who are well-versed in the field to guide its prior art research. Mozilla also calls for several substantive reforms: (A) exclusions for interoperability, (B) proof of concept demonstrations (to avoid claiming without actual implementation), (C) altering the scope of software patents through (1) shorter terms (due to the field’s fast pace of development), (2) no liability for unintentional infringement, and (3) proportionality of damages (e.g., scaling them based on the significance of the patented technology to the value of the defendant’s entire product).
This comment addresses Proposal 1 under Pillar 1. It states that existing review methods are insufficient and that random selection of applications for review will be ineffective, explaining in detail the issues with each mechanism. The comment instead suggests that OPQA review be available after an applicant has tried to discuss specific issues in person. The comment subsequently appends several limitations, and suggests a standard of review mirroring that of the PTAB.
This comment generally applauds the PTO’s proposals, particularly pre-examination prior art searches (Proposal 2 under Pillar 2), the opportunity for an additional applicant response (part of Proposal 5 under Pillar 3), and additional interviews (Proposal 6 under Pillar 3).
This comment suggests two new rules. First, it proposes that the PTO should refund the fee for an applicant’s appeal of a Final Office Action (FOA) if the PTO uses different prior art references, articulates different claim rejections, or there are certain material differences in the PTO’s response to the appeal than in the FOA. Second, the comment recommends that when a third party makes a prior art submission against a pending patent application, at least one of the submitted prior art references should be used by the PTO in its subsequent Office Action.
This commenter strongly supports Proposal 1 and provides detailed suggestions. The program would be most useful in reviewing rejections that are egregiously generic and vague, excessively nit-picky, or simply unreadable. Ultimately, the review should lead to clarification of the words of the Office action, or the examiner reissuing the Office action with a better explanation of the rejection. If the rejection was made on vague grounds, the examiner should set out reasons for rejection more specifically.
The PTO should record all examiner interviews. This would clarify the public record of prosecution history and the actual scope of allowed claims. In particular, it would help in claim construction and in applying the doctrines of equivalents and prosecution history estoppel.
Professor Chin supports all three changes under Proposal 2 of Pillar 1—namely, automated pre-examination search for all applications, immediate electronic access of the results of the search to all applicants, and installment of advanced search techniques. Based on the author’s study of USPTO automation, he makes the following six observations and recommendations: (1) examiners are increasingly relying on keyword search; (2) examiners are increasingly relying on low-frequency keywords; (3) high-frequency terms do not identify the patents cited by the examiners significantly more than low-frequency terms; (4) overreliance on keyword search tends to sacrifice precision for recall; (5) auxiliary search technologies should target linguistic imprecision; and (6) auxiliary search technologies should utilize the vast information within the existing citation network to improve both recall and precision in search
This author highlights the importance of the patent bar in improving patent quality. First, he proposes changing the technical requirements for the patent bar to favor attorneys and agents with modern skills. Second, he suggests requiring patent attorneys and agents to be reasonably informed about an invention through an investigation into prior art.
This comment addresses Proposal 1 (Applicant Request for Prosecution Reviews) under Pillar 1, and Proposal 5 (Review of Compact Prosecution Model) under Pillar 3. The comment proposes expanding Proposal 1 to allow third parties, in addition to applicants, to request Office of Patent Quality Assurance (OPQA) review of particular applications for a fee. The comment suggests that third parties are probably more willing to request such reviews than the original applicant themselves. As to Proposal 5, the comment suggests that applicants should be allowed to file for a non-binding “second opinion” from another examiner, noting that having two sets of eyes examine an application would help in finding potential issues in patents and increase the quality of issued patents.
In order to create an integrated environment for patent application examination, this commenterr suggests using Patent Examiner Workbench, an open-source toolkit which simplifies and automates specification analysis, claim analysis, reference searching, and Office Action generation. This in turn will help improve the quality of patent examinations and PTO office actions.
A former USPTO employee proposes hiring middle-management positions from a pool outside of existing USPTO employees. The commenter suggests that external hires would be more open to new ideas and will have a better understanding of their role in creating a record and issuing strong patents.
Durkin and Gajewski believe that the quality of patent design will improve if design patent drawings are printed clearly. The authors allege that the print quality of the USPTO is uniformly low, so that the Office’s issued design patents are unintelligible or basically depict a different design than what was examined and allowed by the examiner. However, the authors find that the Office often prints the patent flawlessly when an applicant files a design in color. Thus, the Office should consider printing all design patents through the system that prints in color, or giving applicants the option to have their patents printed through it.
This comment notes the importance of a strong, clear patent system in providing market incentives for research and development, and highlights the lack of attention paid to each individual patent. The comment suggests that third party prior art submissions and/or software tools for sorting through prior art should be used to increase the attention paid to each application, and thus provide more predictability for the market.
This comment recommends establishing formal guidelines for what information must be included in an office action for it to be “”complete”” (or for an incomplete action to be grounds for non-final action on the merits), instituting an abbreviated appeal process for simple, single-issue appeals, enabling applicants to submit confidential feedback regarding their examiners, and creating additional incentives (e.g., financial rewards) to examiners who perform high quality work.
Based on their study, these authors discovered that the examiners’ time allocations to review patent applications are causing patent examiners to allow low quality patents. As examination time is cut roughly in half, grant rates rise by as much as 9 to 19 percentage points. Currently, patent examiners receive less examination time as they get promoted. The authors suggest that current scaling of the time allotments upon promotion is too aggressive. They suggest that examiners who are promoted face new time allocations that are less than a 10 to 15 percent decrease from their previous quotas.
This comment suggests that trust and respect between the applicant and examiner is crucial to the patent application process. An examiner’s sole job should be to examine patent applications and render unbiased legal decisions, focusing on just outcomes. The compact prosecution model can be improved by encouraging inventors to conduct their own searches for prior art, by having the first Office Action focus on this same search, by giving inventors a chance to amend their claims, and allowing examiners to suggest claims to inventors.
The print quality of the PTO’s issued design patents is so low that it is creating problems with interpreting the patents. The PTO should investigate this problem and have users be part of the review.
Gianola suggests providing Examiners with advanced training in interview and mediation skills. He believes this will help examiners feel more comfortable in interviews and speed up the resolution of applications.
Gianola supports having a modern, automated search tool for the purposes of placing relevant prior art in front of Examiners at an early stage of examination. Concerned that Examiners might rely too heavily on it, he suggests training them to perform a full examination of an application. He also proposes making the details of how the search works publicly available and documenting the specific algorithm utilization, how application parts are extracted, the keywords and concepts identified, and search tool results in each application file wrapper. He further recommends that the public be granted access to any newly utilized automated search tool. He also suggests allowing applicants to amend claims after the automated search is performed and before the Examination starts. Finally, Gianola suggests periodically evaluating the automated tool and publishing metrics related to the quality of the automated tool.
Confused by the variation in three different notices to file corrected application from three different Examiners with regards to the same error, this commenter requests a more consistent application of rules. He further suggests including the telephone number of the Examiner so the applicant could call to request clarification.
This comment stresses the importance of thorough, accurate prior art research. Regarding Pillar 2, the current Quality Composite Metric includes no assessment of the quality of the prior art research done both by the applicant and the PTO. At a more fundamental level, the PTO should consider whether and why its examiners’ search practices differ qualitatively from the private sector’s. Regarding Pillar 1, pre-examination search is an excellent idea, but the automation of such searches should not be taken too far: dispensing with the “”human element”” of prior art research would be a mistake.
The PTO should require examiners who are hoteling to be available at the national office, for instance, at least one day a month as that location is the most convenient for all parties. Also, the PTO should hire a tax expert to reduce spurious rejections.
The comments suggests that the PTO should examine the quality of its own Office Actions to make sure that they do not contain typographical errors and are written in clear English, and to make sure that they are in line with the Manual of Patent Examining Procedure (MPEP). The PTO should have a quantifiable standard by which to measure whether Office Actions require redrafting.
This comment addresses the PTO’s withdrawal, in the wake of the Supreme Court’s recent Alice decision, of several notices of allowance for which patents had not yet issued. In addition to the PTO’s proposed usage of an enhanced pre-examination search process, such searches could also be used in two additional ways to manage the effects of court decisions. First, examiners could run a pre-issuance search in addition to a pre-examination search in order to find any new court decisions that may impact the validity of claims. Second, the PTO should proactively run such a search for recent, already-issued patents that might be affected by a new court decision, and notify the owners of affected patents.
This comment observes that the image quality in the PTO’s issued design patents is often very poor, sometimes to the point of hindering accurate interpretation of the patents. Enhancing the images’ print quality will improve the quality of design patents and assist examiners in identifying references for future design patent applications. (Also, expresses approval of the Durkin comment from March 5th, 2015.)
This comment addresses the importance and need for pre-application searches of prior art references. The comment also briefly addresses Proposal 2 under Pillar 1 (Automated Pre-Examination Search).
Kennefick offers three main suggestions. First, she suggests that new automated search tools should be used as an aid, but not as a completely automated scan-and-search since a single keyword can have different meanings. Second, while she believes in maintaining the concept of compact prosecution, the PTO should not resort to fee-for-reply to keep prosecution short. She believes that the PTO should also consider eliminating Final Rejections. Finally, Kennefick suggests that having examiners routinely conduct in-person interviews will get expensive, but that the PTO should not raise fees or begin to charge extra fees for interviews.
The commenter suggests specific proposals to further Proposal 3, namely that the USPTO include a written summary and rationale with each substantive decision. Moreover, there should be a system that ensures that all Office actions are complete before issuance. Finally, applicants should be notified when there is a change in the examiner.
Kominers, Scott Duke
Commenter suggests that the PTO use screening mechanisms at or before the time of patent assertion or litigation to deter abuse by non-practicing entities (NPEs). The PTO can crowd source prior art searches done during patent prosecution or inter partes review. Similar techniques might also be used in pre-litigation proceedings to screen for low quality patents that may be too broad to be valid, which can also aid meritorious claims.
This comment approves of making claim construction during examination explicit on the record. The benefits of such recordkeeping would be reduced litigation and inter partes review costs, increased certainty, and consistency. Its drawbacks could include excessive expense and exponential growth of terms, but measures such as offering applicants a library of term-definition resources (i.e., dictionaries and the like) should minimize these downsides.
The comment endorses the proposals for automated prior art searches, and for examiner feedback to preliminary amendments. Conversely, the commenter questions the proposals for more substantial reasons for allowance, and for increasing the scope of examiner interviews.
This comment addresses Proposal 3 under Pillar 1, and seeks to clarify the boundaries claimed by each individual patent. The comment makes concrete policy recommendations that would impose certain responsibilities on applicants, such as requiring specific definitions of potentially ambiguous claims, and consenting to recordation of interviews. The comment also presents a sample patent claim template, and notes that, by requiring applicants to present their claims in claim chart format, they use the same format that courts utilize in construing patent claims.
This comment proposes several methods by which to improve the written description in patent applications and, in turn, improve patent clarity in light of the broadest reasonable construction rule. Additionally, the comment advises that reasons for allowance should be required in all cases and examiner interviews should be recorded in order to improve the public record.
This comment suggests that the PTO should require applicants to affirmatively state whether a limitation in a preamble is intended to be a limitation on claim scope. Furthermore, steps should be taken to ensure terms in the claim are not ambiguous. Finally, the PTO should require reasons for allowance.
This comment suggests that the Patent Quality Summit agenda should include a topic on the knowledge and skills that examiners should possess in order to effectively accomplish their jobs. The comment makes 11 discrete suggestions, encompassing quality metrics for examiner work products and customer service.
This comment addresses Proposal 3 under Pillar 1. It cautions against recording examiner interviews, warning that such recordings may not ultimately clarify the record, but instead raise additional issues.
This commenter is concerned that patent applications that should be rejected because of prior art are often approved. The commenter notes that, in his extensive professional experience with software patents, inadequate search for prior art on the part of PTO examiners is a significant problem that can lead to much post-grant litigation. While not advancing many concrete proposals, the comment suggests that examiners should conduct a prior art search after the preliminary interview with applicant’s counsel. The commenter also notes that providing better search tools to examiners, while beneficial, does not address all of the issues with prior art searches.
This comment addresses concerns with Proposal 2 under Pillar 1 (automated pre-examination search). For instance, examiners may conflate ease of obtaining prior art with the inventor’s ability to appreciate its significance. Further, under the new AIA system, prior art applications can be back-dated to the earliest priority application, even though they were not accessible to the public at the time. Since applicants may no longer swear behind hidden prior art references, the non-obviousness hurdle may become insurmountable in some circumstances. The comment proposes that examiners should be limited in considering hidden prior art when evaluating non-obviousness.
This comment highlights four high-level issues relating to the PTO’s definition of patent quality, such as its under-emphasis on incorrect application rejections, as well as subjective patent quality evaluation. The comment makes several detailed recommendations, such as including a “persuasive” quality metric, and analyzing metadata on examiners’ production counts. In regard to the latter, the comment provides sample summary metrics that could assist examiners in improving the quality of their office actions.
This comment focuses on present, unresolved issues in the patent application system and potential issues with the Pillars proposed by the PTO. In addressing Pillar 2, the comment cautions the implementation of throughput and efficiency metrics as a measure of quality, as they may ultimately lead to negative effects on quality. Further, the comment discusses the present issue of practitioners who draft overly broad claims, which may attract litigation that inhibits their commercial success. The comment further proposes several additions to the Patent Quality initiative, such as partnering with educational institutions to educate inventors about basic patent application skills, creating a simplified patent manual to assist inventors who wish to apply for patents pro se, providing clarification for ambiguous MPEP rules, and modifying MPEP sections 101, 102, and 103 in order to limit patents granted for “trivial” improvements.