On behalf of the United Inventors Association of America (“UIA”), the Glushko-Samuelson Intellectual Property Law Clinic of the American University Washington College of Law submitted a comment to the United States Patent and Trademark Office (“USPTO”) with respect to the proposed automated pre-examination search system (“APEx”) under Proposal 2 of Pillar 1 on Enhancing Patent Quality. 1 The attached is the summary of the submitted comment for Berkley Technology Law Journal.
Raph Younghoon Kim, Student Attorney
Sarah Frank, Student Attorney
Alexandra El-Bayeh, Student Attorney
David G. Grossman, Esq., Supervising Attorney
Professor Victoria Phillips, Director
Glushko-Samuelson Intellectual Property Law Clinic
Representing John Calvert, Executive Director
United Inventors Association of America
The UIA proposes that the USPTO make the proposed APEx system publicly available and freely accessible online. As an initial step, the UIA recommends that the USPTO implement a pilot program granting independent inventors online access to APEx. The UIA believes that making APEx available online will provide invaluable assistance to inventors in locating prior art before filing a patent application and help them to draft a better quality application, which will result in higher quality patents.
I. The UIA Proposes Granting the Public Online Access to APEx.
The UIA recommends that APEx should be made freely available online to the public. The UIA believes that every member of the public is a potential inventor who can contribute to innovation. Publicly available online access to APEx would reduce prior art search costs, allow all users to better navigate the patent prosecution process and lead to higher quality patents. Disclosure plays a major function within patent law and policy. Making APEx publicly available online would further this goal.
Granting the public online access to APEx would also serve as a model for promoting the administration’s ongoing openness and transparency initiatives. These initiatives have come to the forefront in recent years with President Obama’s 2013 Executive Order titled “Making Open and Machine Readable the New Default for Government Information.” The Order makes clear that access to government information “strengthens our democracy, promotes the delivery of efficient and effective services to the public, and contributes to economic growth.” 2 Open access also furthers innovation and creativity. Not only does open access create a wider audience for information, it encourages people to comment and engage with content that would otherwise be inaccessible by normal means. For years, open access models have been encouraged in scientific and technology communities as a means to promote innovation and encourage progress. By granting access to APEx, the USPTO would further the Order’s command that agencies make information resources easy to find, accessible, and usable. The access further allows “[e]ntrepreneurs and innovators . . . to develop a vast range of useful new products and businesses using these public information resources, creating good jobs in the process.” 3
II. As an Initial Step, the UIA Proposes a USPTO Pilot Program Granting Independent Inventors Online Access to APEx.
Public online access to APEx will serve to improve the quality of filed patent applications and patents. Applicants should be able to utilize the prior art identified by APEx to evaluate and improve their applications before filing. The proposed pilot program is a modest first step to test this theory with an easily identifiable sub-group of patent applicants.
Independent inventors are disadvantaged because they have limited search abilities to identify relevant prior art. The costs associated with filing a patent application can discourage independent inventors from seeking patent protection due to limited budgets. Independent inventors frequently cut costs by foregoing a prior art search, which can cost between $1,000 and $3,000. While the search is not required for filing an application, the failure to identify relevant prior art costs independent inventors significant investment in patent prosecutions, as the applications or the issued patents may likely be rejected or invalidated by the USPTO. In such respects, a reliable prior art search is a necessary measure to bolster the patent’s validity. It provides independent inventors a crucial opportunity to assess risks before filing an application and empowers them to draft higher quality applications in light of the searched prior art. If cost-effective tools that reasonably assist pre-filing prior art searches are made available, independent inventors will be better able to identify relevant prior art, make more informed decisions on whether to file patent applications, and draft higher quality patent applications.
With online access to APEx, independent inventors will identify patentability issues using prior art listed in APEx, and thus file higher quality applications. Independent inventors will make these determinations before filing, and protect themselves from investing in poor quality applications. Separately, independent inventors would be motivated to further improve upon their inventions based on this knowledge, and file applications for more innovative inventions. Consequently, the USPTO will receive fewer, but higher quality, applications. This would in turn reduce examiners’ time and resources now wasted on conducting research and preparing Office Actions for applications anticipated by prior art.
Patent examiners will benefit by receiving more extensive Information Disclosure Statements (“IDS”) from better-informed applicants who identify the most relevant prior art in their filing. The IDS could also identify further prior art that applicants find after analyzing APEx results. This would lead the examiner to better understand the scope of the claimed invention in the application. Examiners who receive more extensive lists of prior art will conduct better examinations. Extensive prior art information obtained from APEx would also help applicants affirmatively address potential issues before any Office Actions.
With a greater, more extensive IDS, examiners will take greater notice of the scope of the invention and correctly understand the inventions before issuing Office Actions. This will occur when the Examiner compares the IDS with the initial APEx results. The proposed pilot program should facilitate and improve communications between examiners and applicants.
Online access to APEx would give all inventors a powerful tool for bringing their inventions to the market. It would improve patent quality and promote the creation of useful new products, businesses, and many jobs in the process. It would also create a far more constructive and accessible patent system for independent and ultimately all inventors. Not only does this proposed pilot program promote the USPTO’s patent policies and government openness initiatives, it will encourage innovation and will serve to improve the quality of all filed patent applications and issued patents.
- U.S. Patent and Trademark Office, Request for Comments on Enhancing Patent Quality, 80 Fed. Reg. 6475 (Feb. 5, 2015).
- See Exec. Order No. 13642, 3 C.F.R. 244 (2013).