By Donald Zuhn --
Yesterday, we reported on the oversight hearing on the U.S. Patent and Trademark Office held by the House Subcommittee on Courts, the Internet, and Intellectual Property. The Subcommittee heard statements from Jon Dudas, the Undersecretary of Commerce for Intellectual Property and Director of U.S. Patent and Trademark Office; Robin Nazzaro, the Director of National Resources and Environment for the U.S. General Accountability Office; Robert Budens, the President of the Patent Office Professional Association (POPA); and Alan Kasper, the First Vice President of the American Intellectual Property Law Association (AIPLA) and a partner with Sughrue, Mion, PLLC. On Wednesday, we discussed Director Dudas' testimony. Today, we address Mr. Kasper's statement.
Mr. Kasper's testimony touched on a number of topics, including prosecution cost, pendency, and quality; patent examination issues; Industry Trilateral initiatives; the Office's disciplinary rules and inequitable conduct; and the Office's new rules packages. In an opening discussion on the determination of claim meaning, Mr. Kasper (at left) asserted that the adverse effects of inequitable conduct charges and restricted claim scope caused by the application of principles such as prosecution history estoppel resulted in "a reluctance on the part of Applicants and their representatives to identify the relationship between claims and the original disclosure, to characterize the invention and the prior art during prosecution, and to explain the basis for amendments to the claims during prosecution."
On the topic of prosecution cost, pendency, and quality, Mr. Kasper acknowledged the difficulties faced by the Patent Office in processing increasing numbers of patent applications, but criticized the Office for failing to carry out initiatives identified in its draft Strategic Plan for FY 2007-2012 (published on August 24, 2006 at 71 Fed. Reg. 50048). Mr. Kasper stated that "[w]hile many of the initiatives identified in the Strategic Plan . . . were focused on quality, the main focus of the programs subsequently announced by the USPTO is on the establishment of additional responsibilities and restrictions on Applicants." Mr. Kasper then proceeded to identify "a number of problems that those of us on the front lines of patent practice have experienced," as well as proposed solutions for addressing these problems.
With an eye towards reducing prosecution costs and pendency, Mr. Kasper suggested that the Office encourage its examiners "to propose claim amendments that would, at least in the Examiner’s view, distinguish the claimed invention over the prior art." According to Mr. Kasper, the Office's current production goal system created "a reluctance on the part of the Examiner to suggest or even commit to further claim limitations or modifications that would result in allowable claims and thereby shorten the prosecution process," leaving applicants "to guess what an Examiner might accept, and then file a Response with the hope that the Examiner does not find some further, previously undisclosed interpretation of the claims or the prior art that results in yet another rejection."
Mr. Kasper added that the "often unnecessarily technical and rigid" review of papers submitted by applicants also led to prosecution waste and inefficiency. He cited Notices of Non-Compliant Amendments that were being issued for the improper use of claim identifiers such as "currently amended" or "previously presented," and suggested that a more practical solution would be to allow such errors to be corrected by examiner's amendment. According to Mr. Kasper, the Office's rigid approach of dealing with formalistic errors by applicants stood in "dramatic contrast to the manner in which it treats the formalities governing communications by the Examiner with Applicants."
On the topic of pre-appeal conferences, Mr. Kasper criticized the Office's use of pre-appeal panels comprising the original examiner and supervisor and a third examiner, since the third examiner occupies "a minority position from the beginning." Instead, pre-appeal panels should comprise at least two senior examiners not involved in the prosecution of the application for which pre-appeal review has been requested.
Moving to the Office's proposed disciplinary rules, Mr. Kasper argued that the Office of Enrollment and Discipline's (OED) requirement that practitioners submitting papers "must read each paper in its entirety, regardless of the source" would be "burdensome at best, extremely expensive, and ultimately of little or no benefit to the Office or the Examiner." In addition, Mr. Kasper criticized the Patent Office for failing to allow for public comment on changes in its disciplinary practices. No doubt also speaking about the House's inclusion in its patent reform bill of broad Patent Office regulatory authority, Mr. Kasper described the proposed disciplinary rules as an indication of "the dangers and damage that can be caused where highly sensitive and legally significant issues are addressed by the USPTO prior to any public vetting and opportunity for input."
Addressing the Office's new rules packages on continuations and claims, Information Disclosure Statements, appeals, and multi-invention alternative claims, Mr. Kasper offered to work with the Patent Office to find solutions to the pendency and quality problems identified by the Office. However, Mr. Kasper stressed that "[a] key to any solution . . . is the avoidance of requirements that foster charges of inequitable conduct or force undue limitations on the scope of protection that can be provided for an invention."
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