Pillar IV: Other
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.
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.
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.
ipCreate notes that patent applicants, not just the PTO, bear much responsibility for the quality issues plaguing the patent system, and argues that the PTO should add a fourth pillar regarding providing applicants with objective standards for application quality. Based on these standards, applications would be assigned relative quality scores which would affect the prosecution process. Applicants would thereby be incentivized to submit higher quality applications, with the clearest possible descriptions and claims and comprehensive identification of prior art.
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 commenter appears to believe that patents should only be granted for products so “outstanding” that they cannot be improved upon.
This comment argues that the patent system needs to be completely re-engineered. It should be changed to a registry system. The PTO, instead of “holding back innovation to develop gold standard patents,” would simply be a forum for expedited dispute resolution between patent holders.
The PTO should give applicants and inventors access to the Scientific and Technical Information Center (STIC) database and the algorithm to analyze potential applications for frequently used terms. It could then generate a list of US references to enable the applicant to conduct his or her own search of the prior art, which would likely result in a higher quality application as well as save PTO resources.
The comment proposes a new process that would allow patent correction challenges, providing a reward to independent challengers who find bad independent claims in issued patents. The idea is to incentivize the public to fact-check the work of the PTO, and in so doing, to correct bad patents that are potentially holding back innovation.
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 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 academic researcher (Note: a colleague of Umit Gurun, who also commented separately) notes that her research has revealed empirical differences between the patent assertion behaviors of non-practicing entities (NPEs) and those of practicing entities (PEs). NPEs’ patent litigation/assertion proﬁles tend to indicate trolling rather than protection of legitimate commercial interests. The commenter thus recommends that the PTO use these markers to identify potentially low-quality patents that may warrant further investigation.
Writing in support of Harold Wegner’s comment from March 6th, 2015, this UK attorney suggests that the Manual of Patent Examining Procedure, although a vital reference, is too voluminous to be useful to practitioners and should be supplemented by a new, shorter, more accessible guide similar to international and European guides.
This law professor proposes rolling back the standard for rejecting claims for obviousness on “”common knowledge”” grounds: prior to In re Lee (2002), common knowledge rejections were not required to be supported by written publications. Additionally, he advocates for examiners to search the prior art more comprehensively, relying not only on databases of U.S. patents and academic journals but also on resources such as everyday internet search engines.
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 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 observes that backlog at the PTO and patent quality might actually stem from the same root cause. The PTO is currently funded from the fees it collects, giving it an incentive to issue a large number of patents regardless of their quality. The comment recommends raising the fees in order to provide the PTO with the resources it needs to issue better patents.
This comment applauds the PTO’s current First Action Interview Program pilot but observes that initial interviews would be even more helpful if they occurred earlier in the examination process. A better option would be a Pre-Search Interview Program whereby applicants meet with their examiner before examination even begins, to explain the invention and consider whether the claim language is accurate. This would give the applicant a timely opportunity to amend any unclear claims, and will make the examiner’s initial search and office action more fruitful.
This comment expresses concern with uncooperative examiners who short-circuit the appeal process by reopening prosecution through a new office action, thereby circumventing review by the PTAB. It proposes a fast track appeal program in which the appeal process would follow a fixed timeline, similar to Inter Partes Review, and bar the examiner from terminating the appeal by issuing a new office action. The examiner would still be permitted to issue a notice of allowance.
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.
Addressing prior art research from a different angle, in this comment Grantham complains that patent law’s regulatory framework leaves no space for the act of finding prior art. As a result, patent searching is an undervalued “non-professionalized profession” and the entire patent prosecution industry puts too little effort into prior art research. Low-quality prior art is the result. The PTO could change this by expanding its interpretation of “valuable service” to create a second tier of licensure (i.e., in addition to today’s Patent Agents) for professional patent searchers. When searching is made a visible and integral part of the process, i.e. a “valuable service,” incentives to search will be greater and patent quality will improve.
This comment from an inventor recommends that everyone who looks at a patent application, including the inventors, their patent attorneys, and possibly their supervisors, should have to submit a brief form stating whether or not the patent is of a high quality. This will be accomplished through a numerical scale from 1 to 10.
The commenter suggests that the design patent prosecution process should include a pre-grant publication term (e.g., six months after the application filing date) for third party submissions, to increase the quality of design patents.
This comment suggests various reforms to the USPTO’s operations. First, it suggests strengthening the examiner force by providing greater financial resources for competitive pay, modifying examiner incentives, and allowing for continuing professional development. Next, the comment suggests that there should be greater investment in a patent classification system. The comment also notes that, in looking at quality, there is an inherent bias towards observable allowance errors as opposed to rejection errors, and the focus should be on examination quality and not just (granted) patent quality. The comment provides some statistical evidence to support its claims. Lastly, the comment proposes changing the USPTO’s operational metrics, adopting a more balanced examiner incentive system that takes into account rejection errors, conducting statistical performance studies to design a better examiner production-goal system, and adopting deferred examination procedures.
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).
This comment notes that the PTO’s proposals fail to include any reforms that apply post-issue, or any reforms that exercise the PTO’s fee-setting authority. The comment suggests that the PTO should consider quality-enhancing reforms that apply to issued patents, not simply those that impact applications under examination. It recommends that the PTO consider using its fee-setting authority as a tool for improving patent quality. The comment then makes two proposals: (i) increasing maintenance fees and (ii) decreasing fees for post-issue administrative challenges.
This comment recommends that the PTO include a means for receiving feedback from patent practitioners. Additionally, the comment proposes having some form of recognition for examiners who receive positive feedback.
This comment suggests that examiners should be tracked and monitored based on how often their rejections of patent applications get reversed on appeal. The comment notes that under the current system, examiners have every incentive to reject patent applications, while appeals for reversal take up both resources and time.
This comment suggests that the fundamental problem for patent quality is the inability of the PTO to obtain final decisions as to the patentability of applications. The ability of patent applicants to file a “continuation” under one of several possible procedures is responsible for low-quality patents, extra litigation, and patent processing backlog.
Professor Schindler provides the scientific definition of substantive patent law (SPL). The Supreme Court in Mayo and Alice expanded SPL terms and required their use in testing Emerging Technology Claimed Inventions (ET CIs). However, these SPL terms have not been precisely defined. Consequently, the PTO and courts have interpreted them inconsistently. Professor Schindler defines these terms using both natural language/semantics and mathematical definitions.
Schwartz, et al.
Professor Schwartz of Chicago-Kent College of Law encourages the USPTO to conduct and rely upon empirical studies to improve its operations and procedures. He recommends releasing raw patent-related data to facilitate such empirical studies. He also suggests that the USPTO embrace randomized controlled trials or experiments to evaluate changes in patent examination.
This comment notes that the PTO can increase patent quality by focusing on “economically important” applications. First, the PTO should allocate greater examination time based on factors related to economic importance, including likely litigation, license, or challenge. Second, the PTO should implement a system of deferred examination where applicants are charged two-part fees for examination. This would make available PTO resources to deal with the most important applications first.
This commenter stresses the importance that patent applications themselves be of high quality. To achieve this, patent prosecutors must have access to better training on patent drafting skills. But the PTO’s existing Manual of Patent Examining Procedure is outdated, inaccurate, and bloated, making it difficult for patent agents to learn how to draft patent applications. The PTO should take the lead on creating new materials that more effectively teach best practices for patent drafting. Additionally, the examination for patent agents should focus on these patent drafting skills to ensure that registrants are motivated to adequately master the material.
This comment notes that patent quality is partly attributable to the patent practitioner who brings applications and claims to the USPTO. The comment further suggests that the USPTO’s Manual of Patent Drafting Procedure and its licensure examination has failed to teach proper patent drafting skills to potential practitioners. The comment proposes that the USPTO should create a Manual that focuses more on patent drafting skills, and that the registration examination should include actual drafting exercises as it did previously before 1990. Lastly, the comment suggests reforms beyond practitioner candidate education, including: licensure keyed to a realistic testing procedure; automatic licensure for attorneys at law; continued agent registration under the old system; separate licensure for Patent Trial and Appeal Board practice; provisional licensures with potential audit-like testing for five years; and reciprocal licensure programs with countries like Canada and Japan.
The author believes that Limelight Networks, Inc. v. Akamai Techs., Inc. signals that the licensure system is broken as thousands of patents are all of a sudden recognized as worthless. The problem arises from the radical departure from a licensure examination that had required patent drafting skills. The author points out various options to ensure that each patent practitioner has the necessary qualifications, such as automatic licensure for attorneys of the general bar, continued agent registration of non-law school graduates under the “old” system, and separate licensure for PTAB practice.
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.