USPTO Holds Patent Quality Symposium

by McDonnell Boehnen Hulbert & Berghoff LLP

On April 27th, the U.S. Patent and Trademark Office held a Patent Quality Community Symposium at the Office in Alexandria, VA (consistent with its efforts to disseminate its workforce into regional offices, the offices in Detroit, Dallas, Boulder and Palo Alto participated by video conference).  The Symposium was timed to coincide with the first anniversary of the inauguration of the Office's quality initiative; details of that initiative can be found on the USPTO website; a recording and slides for the Symposium can be found here.

The Symposium opened with a welcome by Valencia Martin Wallace, Deputy Commissioner for Patent Quality, followed by Opening Remarks by Michelle Lee, Under Secretary of Commerce for Intellectual Property and Director of the USPTO.  Director Lee's comments were, appropriately, brief and aspirational.  She spoke of the Office making "sensible enhancements" to quality, assuring the audience that "all ideas would be considered, big and small."  These ideas included ensuring clarity of the record, using internal quality control to ensure correctness of the Office's decisions, and identifying the best prior art by work-sharing with other patent offices.  These enhancements included creation of the position of Deputy Commissioner for Patent Quality.

The Director was followed by a discussion of enhancements to searching and training, presented by Maria Holtmann, Director of International Programs and Don Hajec, Assistant Deputy Commissioner for Patent Operations.  These enhancements include automated searches, to save time and give examiner prior art, using "adaptive technology" and eliminating "insofar as possible" subjectivity (and presumably variability) in an Art Unit examiner to examiner.  Also discussed was the Office of International Patent Cooperation (OIPC), which facilitated cooperation with other Patent Offices.  The Office is currently operating pilot programs with the Japanese (JPO) and Korean (KIPO) offices; in these programs, the search results are shared with applicants prior to initial examination, with a stated goal of promoting consistency and earlier decisions.  There are five offices participating in the "global dossier" program (the European (EPO) and Chinese (SIPO), in addition to the JPO, KIPO and USPTO), and the Office has solicited input from the AIPLA, IPO, and WIPO.  The speakers characterized these efforts as providing a "one-stop" access for all applications in these countries for examiners and public; the examiners have an additional site having the same data.  The hope is for consistency and the ability to find "hard-to-find" foreign art.

Mr. Hajec spoke about improving the extent to which Office personnel understand the underlying technology.  These efforts include electronic information centers for non-patent literature; chat rooms; access to foreign art, biotech sequences, translations; and technical and legal training for examiners.  This is provided by outside technology professionals on a pro bono basis (and suggests a method for introducing examiners to new technology that could, under the right circumstances, facilitate prosecution of applications).  Also mentioned was the Site Experience Education (SEE) program, where examiners visit companies and other technology centers for meeting with inventors and technologists.  The Office has allocated $10K for examiner training (budget dependent) and stakeholder training on patenting process (STEPP) led by PTO trainers and training materials.  Current Office efforts in this regard involve training on the proper application of 35 U.S.C. § 112(f), with plans to extend this to explication of the broadest reasonable interpretation standard, written description, enablement, and indefiniteness, with plans to improve the clarity and consistency of reasons for allowance.  Somewhat ominously Mr. Hajec mentioned workshops on patent eligibility.

Next up was Robin Evans, Director, Technology Center 2800 who spoke about prosecution enhancements, particularly efforts to improve the clarity of the record.  These include the After Final program (which Ms. Evans said was "very popular"; the Patent Ombudsman program, with 1900 inquiries answered per week; and interviews, which increased from an average of 13 hours to 27 hours per examiner from 2008-2015 (and with 30% of disposals having had interviews, albeit without specifying whether this included abandonments).  The use of WebEx and the regional offices were cited as factors related to this increase in interviews.  She also mentioned the use of e-Petitions and references on the Office website regarding contact persons and links to statistics regarding success of different types of petitions under various circumstances.  Finally, in her talk she returned to the theme of improving the clarity of the record using a pilot program beginning in March and running until August with 130 randomly selected examiners and 45 SPEs.  This program is aimed at 1) enhanced claim interpretation; 2) more precise reasons for allowance; 3) better interview summaries; and 4) pre-exam interview at the examiner's option regarding search.  The examiners in the program will be given specific training and their outcomes will be compared with a control group of examiners not involved in the program; this comparison will be performed by QEM managers.  The program will also track the time it takes to provide these enhancements.

Jack Harvey, Acting Assistant Deputy Commissioner for Patent Operations spoke about using outcomes from PTAB review of granted patents to improve patent examination.  He spoke of developing a "feedback loop" in later related applications based on patents having undergone post-grant review; he also discussed expanding this program to include litigation results.  In a pilot program, examiners of such "child" applications will be given access to the art cited in such reviews as well as expert testimony and the parties' arguments.  This program was launched in the last week of April involving about 400 applications.

Brian Hanlon, Director of the Office of Patent Legal Administration and Russ Slifer, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO furthered the discussion of improving examination and evaluation of examination.  The metrics cited by these speakers included clarity, transparency and simplicity, and focused on a new metric instrument, the Master Review Form (which participants had an opportunity to use in an after-lunch workshop).  They also discussed case studies to be focused on single issues performed by the Office but to include stakeholders' experience (and thus to be different from current quality assurance reviews).  These initial efforts will be focused on Sec. 101 eligibility and compliance with guidelines; consistency between Art Units regarding how Sec. 101 is being applied; "compact prosecution" related to Sec. 101 (which was explained to mean first Office Actions without art being cited, on the basis that if the examiner could establish ineligibility then citation of (and searching for) prior art would be a waste of resources; clarity with regard to the motivation to combine references in Sec. 103 rejections; reviewing compliance with the written description requirement in continuation applications; and the consistency of how the Office applies Sec. 112(f) before and after examiner training.  These initial areas of Office focus were culled from 130 suggestions by 110 stakeholders, according to these officials.  Mr. Slifer specifically presented how the Office was using big (and open) data to evaluate patent quality, related to publicly available data; data accessibility is being provided by a developer website.  These data will be used to identify inconsistencies, measure training impact, validate assumptions and identify problems, according to Mr. Slifer.

Marty Rater, Chief Statistician, Office of Patent Quality Assurance spoke on quality metrics as a means for measuring improved patent quality.  This discussion focused on the Master Review Form and Mr. Rater presented the Office's metrics of preventing reopening of prosecution, reducing rework and having consistent decision making, wherein the outliers are reduced but eliminating anomalies is not a practical goal.  He mentioned that the Office wanted stakeholder and other feedback, and in this regard had reinstituted an external quality survey directed at "frequent filers," i.e., applicants filing six or more applications per year.  Mr. Rater noted some outcomes (such as a reduction in the quality of rejections under Sec. 101) and spoke about perceived consistencies (vel non).  These statistics included only 20% of respondents believing there was no inconsistency in how patentability standards were applied, but that the perception of patent quality was increasing from 2006-2015 (from 31% to 54% believing quality was good, and 21% to 9% believing it was bad).

This discussion was the prelude to an interactive session where participants were given an examination fact pattern and then used the Master Review Form to rate the quality of the examination.  As part of this exercise the Office solicited suggestions for improvement as well as identification of those aspects of the form that were the most likely to improve patent quality.

The last session of the day was a practitioner panel moderated by Mr. Slifer; the panel included Rick Nydegger, Workman Nydegger; Bill Bunker, Knobbe Martens; Laura Sheridan, Google; Tim Wilson, SAS; and this author.  Panel members varied in their comments, with some members stating their belief that the quality of patent specifications was poor and others contending that applicants had an incentive to seek overbroad claims having vague terms.  This author noted that these concerns may be technology specific to some degree; in the biotech and pharma space the rigorous application of Sec. 101 (utility) and 112 (written description) reduces any tendency for vague or overbroad claims to be sought, and the value of these patents (due to their long obsolescence horizons) put a premium on obtaining patents whose validity would withstand challenge.

The day concluded with remarks by Drew Hirshfeld, Commissioner for Patents, who spoke about his impressions of the efforts PTO employees make to ensure patent quality today and throughout his time at the Office.

Patent quality is one of those topics, like Mom and apple pie that almost everyone believes in and supports.  However it is also a politically charged topic, and many assert that U.S. patent quality is poor.  Notably, however, no one ever complains that the quality of the patents they are getting is poor; rather it is always someone else (frequently a competitor) who is getting such poor quality patents.  That is the nature of an exclusionary right:  the people who are excluded are usually not happy about it and would like to believe that such exclusion is unwarranted.  There can be no doubt that efforts by the Office to improve clarity and correctness in the patenting process is important, but coming up with metrics for assessing the patent quality metrics discussed during the Symposium is a much harder task.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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