Commissioner Doll Addresses ACI Biotech Patents Conference

    By Kevin E. Noonan --

The American Conference Institute is holding its Biotech Patents conference this week in Boston, and the lunchtime speaker was John Doll, Commissioner for Patents.  Commissioner Doll (at right) is the happy face of the U.S. Patent and Trademark Office:  smiling, self-deprecating, and charming while he espouses the Patent Office mantra that the Office is willing to do everything possible to improve the patenting process in the United States.  And if his audience was skeptical, it was due in part to opposition to the recently-issued final rules for patent continuations and limitations on the number of claims.  Another factor is that Commissioner Doll's numbers in support of his message don't add up (like they didn't in the infamous Town Hall meetings that accompanied the new rules when first proposed).

The Commissioner provided historical and recent evidence on patent "quality," which he explained was determined by reviewing applications allowed by the Examining Corps, and rejecting any application having at least one claim that "should not have been allowed."  The data show that this "allowance error rate" has ranged between 7.5% and 2.75% over the past thirty-two years, and is at about 3.5% for 2006 (the last year for which the statistics are available).  The Commissioner did not explain whether the "errors" calculated in this way were based on art, sufficiency of disclosure (i.e., under 35 U.S.C. § 112) or other sections of the rules or statutes (such as obviousness-type double patenting).  Also not addressed was the converse error rate:  the number of pending applications having at least one patentable claim the Office refuses to allow; he did indicate that this kind of review was done and had a conclusory slide claiming a 90% "in process compliance rate" for this metric (i.e., about 3-fold higher than the allowance error rate; the Office is obviously content when claims that should be allowed are not).  In view of the complexity of the issues that can be presented during patent prosecution, and the amount of time it takes for an examiner to properly understand the invention and its relationship to the art, it is likely that the "error rate" with which the Patent Office "allowance error rate" is determined is both high and the result of cursory and subjective determinations.

Also provided were statistics relating to the patent allowance rate (which the Commissioner explained was determined by dividing the number of allowed patents by the total of allowed patents, abandoned patents, and patents for which there was prepared an Examiner's Answer on appeal, at which point the application was considered "disposed" to the Board of Patent Appeals and Interferences).  This rate has varied over the same 32-year time period from a high of a little more than 70% to the current low of less than 50%, and the Commissioner predicted that rate could be expected to further decrease in view of the new examination guidelines for applying the Supreme Court's KSR decision.  (The post-KSR obviousness guidelines are supposed to be published in the Federal Register and posted on the Patent Office website some time in the next two weeks.)  Commissioner Doll overlayed the two graphs to show the error rate and allowance rates tended to trend together; however, the reduction in patent allowance rate cannot be explained by the decrease in the allowance error rate.  And the Commissioner had no explanation for the decrease in allowance rate over the past five years.

The Commissioner repeated the Patent Office statistics that the backlog of unexamined cases is growing and that patent examiner hiring could not overcome the increase.  (The census of the Patent Examining Corps stood at 5,150 examiners at the end of fiscal year 2006; although the hiring goal for FY2007 is 1,200 new examiners, only 127 have been hired to date and the Office has experienced attrition of 430 examiners.)  He also admitted that there are no longer sufficient numbers of supervisory patent examiners or primary examiners to train the new examiners, necessitating the "patent academy approach."  Thus, rather than being the result of a reasoned decision in favor of the academy approach, it appears that examiners are being trained this way out of necessity.  (The Commissioner also admitted that there were several examiners who "should be returned to the private sector" but refused to identify them.)  Pendency in the biotechnology art unit is at about 23 months to first action and 35 months overall.

The Commissioner is appropriately proud of the electronic filing system, which is now used to file more than 60% of the applications filed each week.  He also extolled the virtues of the Accelerated Examination (AE) program (which replaced the Petition to Make Special practice) and the pilot peer review program.  The AE program has been used by only a small number of applicants, in part because the Office set a significant number of hurdles for an application to qualify.  However, the Commissioner reported that one application in Technology Center 2800 issued within 97 days (and was allowed in 18 days).  Examiners in the program are reviewing unpublished applications (since these will qualify as prior art unavailable during the truncated prosecution of the AE program), and in instances where relevant unpublished patents are found, the application is withdrawn from the program and prosecution suspended until the application becomes available.

Regarding the peer review pilot program, which is being run for the Office by New York Law School, 35 applications have volunteered for the program and 18 applications posed on the peer review website (www.peertopatent.org).  Only applications in Technology Center 2100 (Computer Architecture Software and Information Security) are currently eligible for the program, although the Commissioner opined that biotechnology applications were a likely candidate for expanding the program once it has been evaluated after a one-year pilot period.  Commissioner Doll explained that the program would send an examiner up to ten prior art references submitted in the program, including any comments or annotations submitted with the art.  (It is ironic that the Office has typically given scant notice to determinations of prior art relevance from foreign patent offices, as evidenced for example in an International Search Report received in PCT applications, and is now providing examiners with the comments submitted by the public with these references.  As mentioned by the luncheon audience, the likelihood that a competitor will try to manipulate the system against an applicant is high, and the Office appears to be uninterested in the consequences of this possibility.)

The Commissioner "had a plane to catch" and so was unavailable to discuss the new continuation and claims rules.  However, he did acknowledge that some Patent Office personnel were providing incorrect information in response to inquiries; for example, he said it was not the Office's intention that an International Preliminary Examination would preclude an applicant from filing divisional applications in response to a U.S. Examiner-imposed restriction requirement in a national phase application, but that the rules seemed to so indicate and some Office personnel were misinterpreting the rules in this way.

The continuing message was patent quality, but with a hint (as has been the case throughout) that the blame for any lack of quality lies with applicants and their attorneys.  He sweetened this message by inviting everyone (applicants, attorneys, and the public) to participate in the Patent Public Advisory Committee Outreach program which will occur over the next several months (although the Office's performance in the continuation/claims rules does not inspire confidence).

Finally, Commissioner Doll invited anyone who has the experience that an examiner is not applying the rules properly, or is "churning" an application by reiterating rejections or not explaining why an applicant's response is insufficient, or by citing additional art and/or rejections after an applicant has addressed and overcome previously-asserted grounds of rejection, should contact him directly so he can apply what he called some "one-on-one" training.  Although perhaps sincere, it is also naïve to think that an applicant would avail themselves of this opportunity, since it is almost certain to eliminate the possibility that the examiner would ever deign to allow an application submitted for examination by that applicant.  And the hollowness of the offer did little to dispel the impression that Commissioner Doll's road show is intended more for appearance than substance and is largely irrelevant to the task of understanding the consequences of the violent changes his administration is making to the patent application process.

Comments

[anonymous]

"for example, he said it was not the Office's intention that an International Preliminary Examination would preclude an applicant from filing divisional applications in response to a U.S. Examiner-imposed restriction requirement in a national phase application, but that the rules seemed to so indicate and some Office personnel were misinterpreting the rules in this way."

Could you please provide details as to how the rules might be "misinterpreted"? NIPRA has a "quiz" up with more than 10 hypotheticals relating to how the rules might produce unfair/unexpected results for patent applicants, and would like to add more hypotheticals to raise awareness. Thank you.

http://www.nipra.org/action.html

[Kevin E. Noonan]

Dear NIPRA anonymous:

We have a new post that explains the situation; please let us know if you need anything additional (it should go up tonight).

Thanks for the comment.