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« IPAuctions Begins Sale of U.S. Patent No. 6,645,525 | Main | Harry Manbeck on Inequitable Conduct »

March 13, 2008


The whining about production goals seems no different today than it was 22 years ago when I was a U.S. patent examiner. Turnover was high at that time as well, especially among new examiners.

I suspect that the reason for the turnover is probably the same as it was then -- the private sector generally paid more than the U.S. PTO. for a given set of qualifications, especially when the examiner became a law school graduate.

How can we address the backlog?

Here are some ideas:

> Abandon the concept of a unitary pendency goal for all patent applications and permit applicants to choose whether they want accelerated examination for its patent applications on a case-by-case basis as in Europe (focusing resources where they are needed);

> Harmonize U.S. patent law with European patent law to allow U.S. patent examiners to rely more fully on non-U.S. search results;

> Adopt the first-to-file system to eliminate the need to consider different sets of inventors under 102(e) and priority of invention under 102(g) (maintain the possibility to prove theft of invention through the courts);

> Discourage (penalize) arbitrary, capricious and vague Office Actions in accordance with the Administrative Procedure Act to increase the productivity of communication between the examiners and applicants and allow more flexibility in the number of iterations per pending application to resolve the issues;

> Limit scrutiny for compliance with the duty of disclosure to criminal fraud and assign responsibility for determining compliance solely to the judicial branch to eliminate the burden of creating and reviewing voluminous prophylactic submissions to the U.S. PTO; and

> Create a post-grant opposition system modelled on the EPO system as a substitute for the reexamination system in which validity is addressed de novo after grant (focusing resources on patents having commercial value and reducing the need to impose a stringent duty of disclosure standard during examination due to an inherent third party "quality control").


Indeed, the patent laws should be harmonized-the international community should adopt the US system that is demonstrably superior, for all its flaws, in promoting technological advance.

The purpose of the USPTO is to promote progress, partly by issuing high-quality, valid patents, but mainly by offering a system that provides incentives. Patent quality has improved of late, and the system still provides incentives. All that is not to be made subservient to the goals of a beauracracy to reduce its backlog. Such would the worst of many viable options.

"The whining about production goals seems no different today than it was 22 years ago when I was a U.S. patent examiner. Turnover was high at that time as well, especially among new examiners."

Every abuser and despot seeks to justify behavior which results in their own enrichment. I suggest you watch an episode of the Sopranos buddy. Working for nothing is a common virtue that every overpaid CEO and their government counterparts expose.

The real question is why the USPTO staffs its higher management with political appointees, devoid of patent skills.

Look to the top to see why the agency fails.

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