Pillar III: Excellence in Customer Service
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.
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.
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.
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.
Patent Navigation Inc.
The PTO should give procedural priority to applicants who provide documentation of claim support and an antecedent basis for claim terms. This would incentivize applicants to conduct available quality control assessments and avoid problems arising under Section 112. The result would be greater certainty in claim scope and economization of PTO resources.
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 that the PTO should issue a number to each Information Disclosure Statement (IDS) submitted by applicants. This number could later be used by the applicant when submitting additional references to the same IDS, or to add multiple applications to the same IDS. Grouping each IDS with its family of applications would benefit the examiners by allowing them to see related applications that fall under the same IDS.
This comment suggests that applicants’ counsel should be permitted to travel to locations convenient to the examiner when those examiners are located in a satellite, non-DC location. The comment suggests using federal courthouses or other federal buildings to minimize costs.
This commenter stresses the inefficacy of the current compact prosecution model in resolving patentability issues. He states that additional office actions before the final notice would be beneficial, but should not come at a fee. He suggests that “final” actions that raise new issues should not be final, but rather allow the applicant a chance to respond. Final actions should only come when there are no new issues for the Examiner to bring up. Further, the commenter supports more interviews, including a telephone interview after each office action.
The comment addresses Proposal 6 under Pillar 3 (in-person interviews). The comment generally supports the proposal and suggests a modest fee system in connection therewith. It proposes a pilot program with two options for in-person interviews: (i) an in-person interview with the examiner at the PTO main campus; or (ii) an in-person interview with the examiner’s Supervisory Patent Examiner (SPE) or another primary examiner in Washington, D.C., with the examiner participating via telephone.
The comment supports Proposal 6 under Pillar 3 (In-person interviews).
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.
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.
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 PTO should dissolve the Telework Enhancement Act Pilot Program (TEAPP) hoteling program, and at the very least, require patent examiners to be accessible for in-person interviews upon request at one of the PTO field offices nationwide. As it now stands, the teleworking program allows examiners to hide from their customers, be surly, and yet succeed in the Office. This would not be burdensome because requests for meetings are infrequent.
This comment argues that the PTO’s current system allowing patent examiners to designate office actions as “final” or “non-final,” but discouraging non-final actions by giving examiners no productivity credit for them, prevents efficient cooperation between examiners and applicants. In lieu of the current system, the PTO should eliminate the distinction between final and non-final actions, and instead use an escalating fee structure to deter endless prosecution.
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.
The “clear error” standard of review may be inappropriate in cases where an examiner’s performance is statistically questionable. In those cases, a more stringent review of denied applications is warranted to disprove error. If a review reveals a problem, the examiner should be further trained and a different examiner should be assigned for the application.
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 practitioner opposes the proposal regarding in-person interviews. Traveling to satellite PTO locations would impose an undue burden on examiners. Instead, modern teleconferencing technology should be used to enable live but travel-free interviews.
This practitioner is in favor of the proposal to make in-person interviews available with all examiners, but is concerned that travel costs for one-off interviews could be prohibitive for out-of-town practitioners. He suggests letting applicants pay for their examiners to travel to the PTO’s main office for interviews, which would enable practitioners like himself to schedule multiple interviews in a centralized location.
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.
This commenter suggests that the PTO should take several steps towards identifying and appropriately limiting functional claiming in software during the examination process, for instance, by requiring the applicant to clarify their claims on record.
This comment stresses the importance of in-person interviews to achieve compact prosecution. According to the commenter, a large percentage of USPTO examiners are teleworking, leading to fewer opportunities to meet with examiners in person. Video conferencing can be ineffective and frustrating. The commenter suggests that the USPTO revise the teleworking program, or allow stakeholders to request assignment to an examiner willing to participate in in-person interviews.
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.
Pak, C. Wook;
These commenters identify inadequate search of prior art in the first office action to be responsible for prolonging the prosecution process. They state that the current count system does not incentivize examiners to conduct the best search in advance of the First Action on the Merits (FAOM). In response, they propose a count deduction system where the examiner starts with the maximum count, but loses counts with each “unreasonable” action on the merits.
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 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.