By Donald Zuhn --
In December, the U.S. Patent and Trademark Office invited stakeholders to submit patent quality-related topics that could be used as case studies in a new Enhanced Patent Quality Initiative (EPQI) pilot program. At the time, the Office noted that it regularly performs case studies to investigate specific quality-related issues and analyze how those issues are being treated or addressed across hundreds or thousands of applications, and where appropriate, take action to remediate quality issues or to formulate best practices to further enhance quality.
Earlier this month, in a post by Deputy Commissioner for Patent Quality Valencia Martin Wallace on the USPTO's Director's Forum blog, the Office announced that six topics had been selected for the case study pilot program. The six topics were selected from more than 135 case study submissions from 110 submitters, which included intellectual property organizations, law firms, companies, and individuals. All of the case study submissions have been made available on the USPTO website.
The Deputy Commissioner noted that the six topics selected for the case study pilot program were picked from among the numerous submissions by determining whether a submitted topic was capable of being timely assessed via a case study, and then eliminating topics for which other programs or mechanisms within the USPTO were more appropriate for addressing the topic. Submissions that were deemed to be better addressed by other USPTO programs or mechanisms were forwarded to the appropriate offices for further evaluation.
The six topics selected for the case study pilot program are as follows:
1) Evaluation of the deviation of 35 U.S.C. §101 rejections from official guidance, correctness of rejections and completeness of the analysis. This study will evaluate whether examiners are properly making subject matter eligibility rejections under 35 U.S.C. §101 and clearly communicating their reasoning.
2) Review of consistency of the application of 35 U.S.C. §101 across art units/technology centers. This study will take a look at applications with related technologies located in different art units or technology centers and determine whether similar claims are being treated dissimilarly under 35 U.S.C. §101.
3) The practice of compact prosecution when 35 U.S.C. §101 rejections are made. This study will determine whether all appropriate rejections are being made in a first Office action when a subject matter eligibility issue is also identified.
4) Correctness and clarity of motivation statements in 35 U.S.C. §103 rejections. This study will evaluate whether reasons for combining references set forth in rejections under 35 U.S.C. §103 are being set forth clearly and with correct motivation to combine statements.
5) Enforcement of 35 U.S.C. §112(a) written description in continuing applications. This study will evaluate claims in continuing applications to determine if they contain subject matter unsupported by an original parent application and whether examiners are appropriately enforcing the requirements of 35 U.S.C. §112(a) written description.
6) Consistent treatment of claims after the May 2014 35 U.S.C. §112(f) training. This study will determine whether claims invoking 35 U.S.C. §112(f) are being properly interpreted and treated.
The Deputy Commissioner noted that the Office would provide updates on the selected case studies, and expected to publish results of the case studies by early 2017 (if not earlier). Results of the case studies will be posted to the Office's Case Studies Pilot Program website.