Proposal 1 Under Pillar 1: OPQA Review

Proposal 1 Under Pillar 1: OPQA Review 1
Richard B. Almon 2
Kilpatrick Townsend & Stockton LLP

Quality, as conceived today by the USPTO, can be assessed by the customers of the Office in different ways. Most customers agree that high quality involves ensuring that patent applications are quickly and efficiently examined and that patents are issued on only truly patentable inventions.

This proposal is an important step toward promoting an efficient 3 and proper examination procedure capable of generating the high-quality patents that drive robust innovation.

I.An Additional Means of Review is Needed

Although the Office of Patent Quality Assurance (OPQA) conducts reviews, we believe the random selection of applications by OPQA is not sufficiently effective. An approach that does not rely on random selection will serve applicants better by addressing specific issues in a timely fashion.

A. Ad Hoc Review Is Not Enough

Currently, applicants are encouraged to reach out to an examiner’s Supervising Patent Examiner (SPE) to resolve potential issues and impasses. When reasoning with the examiner fails, applicants will continue to effectively use this approach. It should not be surprising, however, that an examiner’s unreasonable positions are often endorsed by the examiner’s SPE. Any proposal for improving review options should thus address situations where an examiner and his or her SPE are both taking the same position. Currently, there is no effective, fair, and efficient way to resolve such problems. Formal Patent Trials and Appeal Board (PTAB) review of a rejection does not provide an efficient and timely review. The nature of PTAB review causes any resolution to takes a very long time, potentially longer than the useful life of the invention in question (e.g., for certain computer-related inventions). 4

B. PTAB Appeal Availability is Not Enough

Some USPTO representatives have shared strong opinions that the availability of PTAB appeal of a rejection renders this proposal unnecessary. While the PTAB appeal process is indeed important and useful, several related circumstances make the additional review suggested by this proposal an important supplement. With the statutory mandate that the PTAB prioritize inter partes review (IPR) proceedings, ex parte appeals have continued to experience long delays.

i. PTAB Review Is Inefficient for Some Issues

Relying on the PTAB to intervene in minor rejection contentions is analogous to having an appeals court handle a minor discovery dispute in litigation. It is an inefficient use of the resources of the appellate tribunal. Many appeals of rejections are complex. However, many others amount to an applicant arguing that an examiner did not provide enough information and arguments or that the examination was improperly abbreviated. Based on its expertise, the OPQA could quickly and efficiently handle both minor disputes and major ones, without taking up valuable PTAB resources.

ii. Unreasonable Delay Harms Stakeholders

The current average three-year pendency of PTAB appeals is caused, at least in part, by the review of the type of rejections that could be better addressed by the OPQA. With the increasing popularity of prioritized IPR proceedings, delays will likely continue to become longer. The old adage about delayed justice being the equivalent of denied justice applies to PTAB appeals in many circumstances—especially with certain types of rejections. Delaying prosecution for extended periods of time (e.g., the average three-year pendency for PTAB review of rejections) harm stakeholders. The prosecution and technology experts at the USPTO understand how important time can be for some applications. Allowing for a more expedited review process by the OPQA would be a more efficient way to help alleviate the damage caused by long prosecution delays. 5

iii. PTAB Pendency Leads to Lack of Incentive for Examiners

The same examiners and SPEs who are exhorted by applicants to make more complete rejections, or reconsider other improper rejections, know that any binding review of their actions will come after the significant time and expense of a PTAB appeal. This same lack of incentive could apply to the ad hoc review channels discussed above. When examiners know that review is far into the future for an aggrieved applicant, their incentive to reconsider their decisions is greatly reduced.

C. Identifying Trends Within the Office

As identified at the Quality Summit, allowing applicants to request review of applications gives the Office the opportunity to analyze the data from the reviews to identify trends and challenges to better inform future training and improvements to the examination process. Having the Office’s prosecution experts perform this overarching analysis may be more appropriate than having private commentators identify and comment on potential problems. The clear issues with outlier low allowance rates for certain business method art units and the Sensitive Application Warning System program are examples of areas where the Office could leverage statistics to investigate a potential problem and work to develop a solution.

II. Specifics of Suggested OPQA Review

The implementation specifics of our proposed program are important. As evidenced by discussions at the Quality Summit, this program could be implemented in a variety of ways. Some approaches could render it useless.

A. Available After Exhausting Ad-Hoc Approaches

OPQA review should be available upon a certification that applicant has tried to discuss, in person, a specific issue with the SPE (and potentially, if resources allow, a Technology Center (TC) Director). This requirement will not only potentially avoid unnecessary OPQA review (saving resources at all levels), but will also incentivize for SPEs and TC Directors to set up meetings that, currently, they may not be willing to have. Often this lack of willingness to meet about a troublesome issue—especially in person—is greatly frustrating to applicants. Requiring the SPE and TC Director to consider and argue the applicant’s issue could also head off review by persuading the applicant of the propriety of the rejection. Of course, if the SPE and TC Director do not make themselves available in a timely manner, then initiating an OPQA review should be appropriate.

B. Limited to Presented Issue(s)

Review should be limited to the issues presented by the applicant. A cornerstone of appellate review is the consideration only of issues presented on appeal. Longstanding and reasoned, this requirement not only promotes efficiency but also helps to focus the tribunal on the issues most important to the matter. Some people strongly argue for a complete OPQA review of all aspects of an application. Not only would this be inefficient (and likely introduce OPQA delays similar to the PTAB’s), but we believe this proposal is a “poison pill” that would make applicants less likely to take advantage of OPQA review.

C. OPQA Standard of Review and Results

Currently the standard of review for the OPQA is “clear error.” We believe that it should instead mirror the PTAB’s standard, in which the examiner’s current approach is not given any deference. An analogous standard for OPQA review would assist the USPTO in important internal quality and training efforts. A timely review, documented and provided to the applicant, by prosecution experts is also important. An OPQA review decision should be binding upon the examiner such that a rejection deemed to be erroneous must be withdrawn.

III. Conclusion

Proper examination is essential to a high-quality patent system. A fair balance between the quality of prosecution and the quality of allowances requires a quick and efficient alternative for review by the examining corps of the Office. Beyond the issues of fundamental fairness, properly implementing this proposal would significantly improve the efficiency of rejection review.

This program should require applicants to try to work with the examiner and their SPE before requesting review; review should be limited to issues presented by the applicant; and decisions should be documented and binding.

  1. A prior version of this comment was submitted to the U.S. Patent and Trademark Office on May 7, 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, Angel Lezak, Thomas Franklin, Adam Gianola, and Matt Kitces. 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.
  3. Some may argue that inefficient, drawn-out prosecution may violate applicants’ due process rights.
  4. Some may argue that these delays, which may extend beyond the useful life of the technology in question, may also violate applicants’ due process rights.
  5. Long prosecution delays are currently partly adjusted for by patent term adjustment (PTA). However, PTA on its own is not a suitable solution, especially for technology that rapidly obsolesces.