Comment Regarding USPTO Proposal 3: Clarity of Record

Comment Regarding USPTO Proposal 3: Clarity of Record 1
Matthew T. Kitces 2
Kilpatrick Townsend & Stockton LLP

An efficient and effective examination process is critical to enhancing patent quality in the United States Patent and Trademark Office (USPTO or PTO). Clarity of the record is necessary to ensure everyone involved, including examiners, applicants, applicants’ representatives, and anyone else providing substantive review or analysis of an application all understand the status of the application under examination and the rationales of one another. Whether or not there is agreement, without a clear collective understanding of one another’s rationales, it is extremely difficult to overcome an impasse or to accurately assess arguments, remarks, amendments, and the like.

Since the USPTO examines and makes substantive decisions regarding applications, it is crucial that clear and informative communication be integral to all substantive PTO decisions. Several small changes to improve clarity of the record can drastically improve examination effectiveness and efficiency.

Proposal: Written Summary with Rationale Should Accompany All Substantive PTO Decisions
As part of ensuring clarity of the record, it is imperative that when a patent office makes a decision on an application, it does so with transparency. Any substantive reviews performed by any patent office examiners, panel members, or other individuals should be accompanied by a clear written summary of the review. At the very least, brief rationales should accompany any decisions made.

For example, currently, when an application is reviewed under the Pre-Appeal Brief Conference (PABC) Pilot Program, the record only shows that such a conference occurred, who participated in the conference, and whether the application will remain under appeal. There is no rationale or explanation given. It would be very helpful to applicants and their representatives to clearly understand as to why the panel members of the PABC came to their particular decision. Armed with the rationale behind the decision, applicants and their representatives can better assess how to proceed efficiently and effectively, which may include addressing concerns raised by the PABC panel members or opting not to file an appeal brief. Right now, the PABC decision provides extremely little substantive information, yet it serves as the only record of a substantial, substantive review of the application.

Additionally, the USPTO sometimes reviews examiners’ decisions or other aspects of an application by nondisclosed panels or individuals. These “secret” reviews can have a substantive impact on the application and its examination, but are often not recorded on the public record. For example, the Sensitive Application Warning System (now discontinued), the 101 Panel, and Quality Assurance Specialists involved or currently involve substantive review of an application, but no record of these proceedings was or is provided. In order to ensure clarity of the record, and thus efficient, transparent, and effective examination, the USPTO must provide some record of each substantive decision made regarding an application. At the very least, the record should reflect that the application was reviewed pursuant to a certain program (e.g., the 101 Panel). Preferably, the record also should show who reviewed the application, what was reviewed, what decision was reached, and the rationale for the decision.

Additionally, these types of decision summaries can include a section to identify the relevant type of issue discussed. For example, in a PABC decision, the summary can indicate that the panel agreed with a §101 issue, but did not agree with a §103 issue. This type of granular information can be leveraged to track examiner and art unit quality on individual issues. Additionally, this type of information can inform the public of the prevalence of certain issues and can inform applicants and their representatives as to which issues panel members generally agree on.

This clarity of record that comes from a written summary with rationale accompanying all PTO decisions will help applicants, their representatives, and examiners interact more efficiently and effectively on an application-by-application basis. Additionally, the data from these decision summaries can be used to assess examiner quality (e.g., an examiner who has been overturned by many PABC panels may need additional training). Finally, the overall impact of these types of records becoming available to the public will increase the efficiency, transparency, and effectiveness of the patent system as a whole, as more people will be aware of and understand how substantive decisions are made and will be able to draft and file their applications accordingly.

Proposal: Completeness of Office Actions
On numerous occasions, we have witnessed or become aware of incomplete office actions that have been issued by the USPTO. These incomplete office actions are incomplete because they do not address all pending claims, they include form paragraphs that are not filled in, or for other similar reasons.

For example, the following text was extracted from a recent office action:


As is evident, incomplete office actions drastically reduce the clarity of the record and cause problems that can delay prosecution.

We propose that a system be put in place to ensure that all office actions are complete before being issued. If possible, an automated system could scan the text of an office action to see if any claims have not been addressed and to ensure all form paragraphs are filled in. Alternatively or in addition to an automated system, we propose that a periodic human review be conducted on random office actions, possibly before they issue, solely for the purpose of ensuring their completeness. Since the amount of time necessary to review an office action just for completeness (and not substance) would be relatively short, such reviews can occur on a more regular basis.

Completeness does not necessarily ensure that all substantive rejections are fully formed (e.g., that all elements of a prima facie rejection are made), although that would be preferable.

Proposal: Applicants Should be Notified upon Change in Examiner
During the pendency of an application, it is not unusual for the assigned examiner to leave the USPTO for one reason or another. When a new examiner is assigned to an application, it is not unusual for the applicants to find out only once an office action or other substantive communication is issued. We propose that, whenever a new examiner is assigned to an application, a notice be sent out in the case, such as a “Notice of Examiner Assignment.” Such a notice can be similar to a notice of acceptance of power of attorney or other short notice. By receiving this notice, applicants can remain apprised of changes in the individual responsible for examining the application.

For example, if a new examiner is assigned to a case after applicants have filed a response to a non-final office action, the applicants might not know that a new examiner has been assigned until after the new examiner issues a final office action. If, however, the applicant has received a “Notice of Examiner Assignment,” the applicant has an opportunity to reach out to the new examiner and set up an interview to explain the invention and get the examiner up to speed.

As another example, a “Notice of Examiner Assignment” can be helpful during an appeal process, which can take many years. If the appeal was made due to an impasse between the examiner and applicant, the impasse may no longer exist between the new examiner and applicant, who may be able to work together to find allowable subject matter. Upon receiving a Notice of Examiner Assignment, an applicant in such an appeal process could contact the examiner to discuss the case and determine whether to voluntarily take the case out of appeal.

  1. A prior version of this comment was submitted to the U.S. Patent and Trademark Office on May 6, 2015, in response to its Request for Comments on Enhancing Patent Quality, 80 Fed. Reg. 6475 (Feb. 5, 2015).
  2. This comment is also supported by Kate S. Gaudry, Adam J. Gianola, Tom Franklin, Angel Lezak, and Rich Almon. It is attributable only to the author and indicated supporters, and does not represent the opinions or beliefs of any other individuals, companies, or organizations.