Improving Patent Examination at the US Patent and Trademark Office

Perfect Examination

The U.S. Patent Office has never aspired to provide perfect examination. Under the old law, the swearing-back of a publication issued within the pre-filing one-year grace period left unresolved whether the party originating that reference had publicly used the invention, or even published it, prior to the beginning of the one-year grace period. This is an issue in its own right, quite apart from whether the publisher was a prior inventor.

The public does not understand that the Patent Office cannot achieve perfect examination. This impossibility should be made clear in any public statements that the PTO may make.

New Novelty Standards

Increasingly more issued patents are likely to be held invalid due to the switch from the old novelty rules to Absolute World Novelty in 2013. Language barriers alone make it impossible for the U.S. PTO to be aware of all published literature. And of course, under the new law there is no way the U.S. PTO can identify prior public disclosures that amount to a barring reference if they have not been recorded and made available as literature or as an electronic resource. Such issues have to be left to litigation. This should be explained to the public.

In view of the burden of the new novelty standards, the PTO should establish ways to improve prior art searches. I propose that incentives should be provided to encourage applicants to submit prior art searches from authoritative sources as part of the examination process. Something more than a duty of disclosure should be established. An applicant should have incentives to do responsible pre-filing searches, and penalties for not doing so. A $500 search completed in an Attorney’s office on the US PTO website should not qualify.

“Authoritative sources” could include searches done at any of the major Patent Offices around the world. The French had a system for many years requiring applicants to conduct and file a search report prepared at the International Patent Institute in The Hague, now a branch of the European Patent Office. This was a legal requirement imposed on applicants in order for their filings to move forward. Establishing a procedure within the USPTO that would encourage a similar practice would certainly contribute to patent validity. Incentives could be offered, such as advanced examination or a moderate reduction in fees, for an interim period before such a procedure becomes mandatory.

Ex Parte Re-Examination

The Patent Office should publicize more clearly the right of the public to bring an issued patent back before the Patent Office for re-examination. The cost for requesting ex parte re-examination should not be severe.

Deferred Examination

It is unclear why certain commentators in the United States are resistant to deferred examination. It works very well in a number of other countries. An advantage of deferred examination is that applicants may choose to drop-out of the examination lineup after a number of years if they realize that the invention addressed by a pending application is not going to succeed in the marketplace. This saves the Patent Office from examining irrelevant patent applications.

The USPTO collects an examination fee at the time of filing. Thus, the USPTO could face financial distress if it forgoes this fee and defers its imposition until a request for examination is filed. An alternative solution might be a voluntary program whereby applicants can, for example, request a two-year deferral within three years of an application’s priority date. There could even be a fee for making such a request. There is no reason why the deferral could not be for a longer period.

Critics of this arrangement will say that the public will be left uncertain as to the scope of any potential patent rights that may eventually issue. The right of any member of the public to precipitate examination on payment of a modest fee should satisfy this objection.

Deferred examination will not necessarily improve the quality of other applications that are being processed. However, it will help focus the resources of the Patent Office on applications that are perceived as more meaningful and this would be more efficient in its own right.

Relevance of Foreign Participation

The American Patent System is going to face what some will see as a crisis in the coming years. Since 2008, more applications have been filed at the USPTO based on inventions made by foreign resident inventors compared to those made by American resident inventors. This trend of increased foreign participation is likely to continue. Apart from the policy issue of whether a patent system dominated by foreigners will be serving America in the same way as it has in the past, virtually all of these foreign-originating patent applications will have been prepared by foreign patent attorneys.

It is an illusion to assume that the designated resident U.S. patent agents and attorneys who file these applications will have read them for consistency and coherence. Indeed, such attorneys, called “Associates” by the foreign originating attorney, substantially function only in a “post office” mode.
The designated U.S. attorney simply relies on the competence of the foreign attorney to have prepared a coherent patent specification. This issue of quality, or lack thereof, is distinct from the complications introduced by the translation of disclosures into the English language.

The Patent Office should consider how to reach out to these foreign originating agents and attorneys in order to ensure that the patent disclosures that they prepare are of the best quality possible. Standardization of templates for patent specifications would go partway down that path. Efforts in conjunction with WIPO to achieve such coordination in the structuring of patent applications would further this goal. Patent organizations should also consider other procedures for encouraging applicants to draft coherent and concise patent disclosures.

David J French Ottawa, Canada