By Sarah Fendrick --
The U.S. Patent and Trademark Office and the Patent Public Advisory Committee (PPAC) have created a project to improve the overall quality of patents, reduce patent application pendency, and ensure that granted patents are valid. The improvement initiative does not involve changes in patent law or substantive new rules, but rather the USPTO is seeking public comment on a number of categories identified in a Notice published in the Federal Register (74 Fed. Reg. 65093) on December 9, 2009.
In the past, two official metrics of examination quality were employed by the USPTO, the Allowance Compliance Rate and the In-Process Review (IPR) Compliance Rate. The Allowance Compliance Rate was determined by randomly selecting a sample of allowed applications and reviewing the patentability of the claims, the completeness of the record, and the quality of the examiner's search. The IPR Compliance Rate was determined by randomly selecting a sample of applications that had Office actions issued prior to allowance and reviewing indicators of quality such as whether the rejections made in the Office action were proper, whether the examiner clearly articulated the reasons for rejection, the quality of the examiner's search, and the propriety of any restriction requirement (for a full list of factors, see Notice). The IPR Compliance Rate during 2005-2009 encompassed both final and non-final Office actions. However, in 2010, the IPR Compliance Rate was redefined to include only non-final office actions and the Allowance Compliance Rate was changed to Final Rejection/Allowance Compliance Rate.
In an effort to improve the quality of patents and to improve upon the current metrics of examination quality, the USPTO has identified a number of categories where public comment is being sought. The first category includes currently implemented quality measures and future measures not yet adopted. Regarding current measures, the USPTO hopes to receive comments on how effective the current procedures are for ensuring the quality of patents. Of particular interest are methods for finding the best prior art, obtaining a comprehensive initial application, providing first Office actions that include clear explanations of all issues raised in the action, receiving clear and comprehensive responses to Office actions, and proper use of interviews. To address the issue of prior art, the Office is looking for comments concerning search techniques and procedures that could be used to locate the best prior art as well as technologies where it appears the best prior art is not being identified by examiners. To ensure the receipt of comprehensive initial applications, the USPTO is soliciting comments on what current USPTO guidelines prevent effective preparation of comprehensive applications as well as methods that can be implemented to measure the quality and completeness of the submitted application. Comments are also being sought on what aspects of an initial Office action will enhance quality and how examiners can best communicate to applicants what is needed in a response to the Office action. Similarly, the Office is requesting comments that will ensure comprehensive responses to Office actions. Specifically, the Office is asking for comments on what USPTO guidelines stand in the way of applicants when preparing a response that will allow for efficient examination.
The second category pertains to the stages of monitoring. Within this category, the USTPO is looking for comments on procedures that may reduce patent pendency. More specifically, the USPTO is considering at what stage and how frequently quality monitoring procedures should be implemented. In addition, public input on how to effectively increase quality at initial stages of prosecution is being sought by the USPTO.
The third category concerns pendency. Under this category, the Office seeks comments on whether the quality of prosecution and examination of an application, and quality of the granted patent, can be improved while also reducing the pendency of the process. The USPTO also seeks input on how continuing applications influence the goal of pendency and quality.
Category four seeks comment and feedback on pilot programs and their role in ensuring quality and pendency.
Category five calls for comment on past USPTO surveys of the patent community and suggestions for improving future surveys. The Customer Panel Quality Survey was launched in 2006 to receive input from frequent users of the USPTO concerning examination quality issues as well as a means for customers to provide feedback to the USPTO regarding quality measures. Past participants of the survey were top filers (law firms, organizations, or individuals that have submitted six or more applications in the previous year). Survey results are analyzed quarterly and have on average 1100 participants per quarter.
Category six regards feedback on existing tools which can aid the USPTO and its users to enhance the quality of USPTO processes. Specifically, feedback on software tools that will facilitate monitoring, search tools, claim analysis tools, and case law identification tools is being sought.
Finally, under category seven, the USTPO seeks comments on methods that can incentivize applicants and USPTO personnel to participate in efforts to improve the quality of patents.
Individuals wishing to submit comments must do so on or before February 2, 2010. Each comment should include: (1) the name and affiliation of the individual responding, and (2) an indication of whether the comments offered represent the views of the respondent's organization or are the respondent's personal views. The Office indicates that it prefers to receive comments via the internet at firstname.lastname@example.org. Alternatively, comments can be submitted by regular mail to: Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Kenneth M. Schor and Pinchus M. Laufer. The Office warns that parties should not submit information that they do not wish to be publicly disclosed or made electronically accessible.