By Donald Zuhn --
In December, the U.S. Patent and Trademark Office invited stakeholders to submit patent quality-related topics that they believe should be the subject of a case study as part of a new Enhanced Patent Quality Initiative pilot program (see "USPTO Seeks Topics for Quality Case Study Pilot Program"). The Office noted that it regularly performs case studies to investigate specific quality-related issues and individual examiner work products, and that such case studies allow the Office to investigate how a particular issue is being treated or addressed across hundreds or thousands of applications, and where appropriate, to take action to remediate quality issues or to formulate best practices to further enhance quality.
Last month, the Intellectual Property Owners Association (IPO) accepted the Office's invitation by submitting five suggested topics that the IPO thought should be the subject of a case study. The five topics proposed by the IPO were:
1. Markush Grouping Rejections –- the IPO proposes that the Office study whether rejections made under the "judicially approved improper Markush grouping doctrine" are consistent with the treatment of Markush claims as guided by the case law, Office policy, and the MPEP. The IPO contends that a significant number of rejections for improper Markush groupings have been issued since 2011, when the Office issued supplemental examination guidelines and further guidance was provided at a Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting. The IPO suggests that the study focus on improper Markush group rejections as opposed to "garden variety" Markush rejections (e.g., minor formatting issues such as use of "consisting of" versus "comprising" or use of "and" versus "or"), as well as compare rejections issued for Technology Center 1600 (biotech & organic chemistry) and TC1700 (chemical and materials). The IPO requests that the Office examine whether any claim rejections made under the "judicially approved improper Markush grouping doctrine" are proper, because the current version of the MPEP does not expressly authorize rejections made on this basis.
2. Restriction Requirement vs. Unity of Invention –- the IPO also proposes that the Office study restriction practice in U.S. national stage applications and determine how frequently U.S. examiners find lack of unity when the PCT examiner did not, and how frequently U.S. examiners issue a restriction requirement that is significantly different from any lack of unity finding by the PCT examiner. The IPO also requests that the Office analyze whether in such cases, the U.S. examiner's different restriction requirement was proper under the unity of invention rules.
3. Helping Users Evaluate Usefulness of Patent Prosecution Highway Based on Differing Patentability Determinations in U.S. vs. Foreign Patent Applications –- the IPO also proposes that the Office study applications being examined under the Patent Prosecution Highway (PPH) to determine how frequently U.S. examiners reject claims over prior art that was considered in the foreign patent application on which the PPH request was based, and examine the bases for the different patentability determinations. The IPO also requests that in cases where differences are detected, the Office should determine whether the prior art rejection in the U.S. case was proper under U.S. law, and if so, whether the differences in treatment between the U.S. and foreign applications were due to:
(i) a "broadest reasonable interpretation" of the claim that was not applied in the foreign application; (ii) a different understanding of the claimed invention; (iii) a different understanding of the prior art; (iv) a difference between obviousness under U.S. law and the standard applied by the foreign patent office (e.g., inventive step); or (v) no apparent reason.
The IPO also suggests that the Office analyze differences across technology centers, and report the results by technology center.
4. Comparing Office Actions Before and After RCE –- the IPO also proposes that the Office study Office actions before and after an RCE has been filed to determine whether after final practice can be further improved. The IPO suggests that the Office conduct the study by determining whether an applicant filed an amendment in response to a final Office action, checking for the mailing of an advisory action refusing entry of the after final amendment, and then where an RCE was subsequently filed to have the identical claim amendment considered, comparing the first Office action after the RCE was filed with the final Office action. According to the IPO, the study should focus on distinguishing cases in which an examiner performed additional searching from those in which the examiner merely reissued the same Office action without any substantive changes.
5. Correlating Appeal Conference Data with Final Rejection Practice and PTAB Outcomes –- the IPO also proposes that the Office study pre-appeal brief conference data and compare that data with final rejections and PTAB outcomes. The IPO notes that the Office could conduct the study by reviewing appeal conference outcomes and tracking cases that are reopened or allowed at that stage to determine whether any particular art units or examiners have a disproportionate number of cases in those categories. According to the IPO, cases that are reopened or allowed at the appeal conference stage are an indicator that the final rejection was improper.