A submission to the Berkeley Technical Law Journal
In response to the USPTO’s Request for Comments on
Enhancing Patent Quality 1

Donald L. Champagne, Ph.D., P.E.
The Johns Hopkins University School of Medicine 2

4 May 2015

I have chosen the BTLJ’s format, which asks for a response to the following six questions.

(1) To what quality pillar does your idea pertain? 3

Pillar 1: “Excellence in work products, in the form of issued patents and Office actions.”

I propose that the USPTO (the Office) “draft” practitioners to perform case-specific quality reviews of up to three cases per year for two years. The selected practitioners would serve a legal obligation as special examiners, in the Office of Patent Quality Review, alongside permanent USPTO patent quality specialists or alongside the Quality Assurance Supervisors in the Technical Centers. These special examiners would receive compensation from the Office comparable to that provided to permanent employees doing the same work.

The rules should be changed to make willingness to serve as a special examiner a condition of registration to practice before the USPTO.

Support for my proposal: Work product quality can be enhanced in a number of ways. Perhaps the simplest would be to perform more quality reviews, as has been suggested by the Office. 4 However, the Office also needs to address the continual criticism that its work products are too far from perfect. This criticism is especially important when it comes from the people who know where the bodies are buried: trained experts in the practice, the Congress and the courts.

The best way to address this criticism is to invite representatives of the critics to contribute in meaningful numbers to the quality review process. There are not enough experts in either the Congress or the courts to contribute meaningful numbers.5 However, there are thousands of well-qualified practitioners who could do so.

Having qualified outsiders participate in quality reviews would bring a different yet important perspective to the review process. The patent system is designed to find a balance between the rights of patent owners and the rest of humankind. The practitioners represent the patent owners. For example, I would expect that practitioner special examiners would tend to give more weight than does the Office to the quality of communications from the Office, to factors such as the clarity of the record6 or the quality of Office actions.7

(2) Has this idea or a version of it been implemented before anywhere, in the US or elsewhere?

Not to my knowledge.

(3) How specifically do you suggest the USPTO implement this proposal? For example, as a revised guideline, a pilot program, examiner training, etc.

This idea should be tested in a two-stage pilot program run for five years. The test of the program should be as realistic as possible. Here, the idea would be to create a rule that obligates 60 practitioners chosen by the Office to serve as special examiners for the recommended two-year period and then another 60 to serve as special examiners for a second two-year period. However, the rulemaking process alone could take a year or longer, so I would begin with a pilot program of 30 volunteer practitioners, followed by another 90 subject to an obligation established through rulemaking. Alternatively, the first 60 could be volunteers and the second 60 obligated through rule-making.

(4) What would the relevant timeframe be for implementation of your proposal? For proposals that take longer to implement, please identify potential milestones that could be adopted along the way.

The first stage of the pilot program involving volunteers could begin as soon as funding is secured. I estimate the first-year would require a budget of $300 thousand. This assumes $90 thousand for volunteer special examiner compensation and $210 thousand to set up and administer the program. The second stage of the pilot program would require one year, perhaps longer, for rule-making.

Identifying good practitioner special examiners would be easy: every primary examiner with a few years of experience knows the best practitioners in his or her art area.

(5) How will we know whether or not the proposal is working? What tests or evaluation metrics could be included?

The key metric should be a number count of published criticisms pertaining to the Office’s work products. It might be helpful to compile several counts for various sources of criticism and types of work product (allowance actions, final rejections, etc.). Standards should be tentatively established for dealing with derivative criticisms (criticism repeated or otherwise derived from the original publication) and other measurement issues, and should then be revisited after no more than two years.

A historical baseline should be established for the years 2006 to 2015 and criticism count(s) computed and reported for at least five years thereafter. If this proposal is successful, the count(s) should show a statistically significant downtrend over the five years.

(6) What legal authority and resources would the USPTO need to rely upon or obtain in order to implement your proposal?

I believe this proposal can be implemented through the Office’s rule-making. The Office has the legal authority to impose reasonable requirements on practitioners. In my opinion, requiring a practitioner to perform a quality review of up to three cases per year for two years with compensation is reasonable.

In the order of $2 million will be needed for the proposed five-year pilot program; a Congressional appropriation might be needed for that.

  1. See the USPTO’s request for comments at https://www.federalregister.gov/articles/2015/02/05/2015-02398/request-for-comments-on-enhancing-patent-quality.
  2. I am research faculty at The Johns Hopkins University School of Medicine, Baltimore, Maryland, with the rank of Visiting Scientist in Ophthalmology (part-time). The opinions expressed herein are solely mine, and should not be construed as those of the Johns Hopkins University. I can be contacted by e-mail at dchampagne@jhmi.edu or by telephone at 301-920-0976. I retired from the USPTO in December 2014 after 17 years examining patents, principally in the electronic advertising and sales promotion art (class 705/14 or G06Q/30).
  3. See the USPTO’s request for comments at https://www.federalregister.gov/articles/2015/02/05/2015-02398/request-for-comments-on-enhancing-patent-quality.
  4. See U.S. Patent and Trademark Office, Enhance Current Quality Assurance Program by Integrating Reviews to Cover All Stages of Examination (Jan. 12, 2015), http://www.uspto.gov/web/offices/com/strat21/action/q1p17.htm.
  5. This is not to say that qualified employees of the Congress and the courts should be precluded from volunteering as special examiners. While their numbers would be few, they could bring another helpful perspective to the work-product quality review process, as well as gain insight into the workings of the Office.
  6. See U.S. Patent and Trademark Office, Request for Comments on Enhancing Patent Quality, 80 Fed. Reg. 6475 (Feb. 5, 2015) (outlining a proposal relating to “Clarity of the Record”).
  7. See USPTO Talk, Hey, USPTO: To Improve Patent Quality, Improve Office Action Quality (Apr. 14, 2015), http://www.usptotalk.com/hey-uspto-to-improve-patent-quality-improve-office-action-quality.