Lunch with Commissioner Doll

    By Kevin E. Noonan --

John Doll, Commissioner for Patents of the U.S. Patent and Trademark Office, gave a luncheon seminar today concerning the state of the USPTO, hosted by the Boston office of Kirkpatrick & Lockhart Preston Gates Ellis LLP.  As we've said before, 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.  Today's offering was no different.

The Commissioner touted a number of programs and policies in the Office intended to address the twin goals of reducing the backlog of unexamined applications and improving the quality of granted patents.  The first initiative Commissioner Doll mentioned was the accelerated examination (AE) program, which he considers an unqualified success.  The statistics he cited bear him out:  110 patents have been granted under the program, and the goal of filing to final disposition (abandonment, grant, or exit from the program for appeal or further prosecution) within a year has "never" been missed.  One unnamed patent was particularly speedy:  allowed within 17 days of filing and granted 58 days thereafter (75 days filing to grant).  Use of the program is accelerating, with 200 applications filed requesting AE in the past month.  Commissioner Doll confessed that his intuition about what would be the most important component of the program - the Examination Support Document, in which the results and detailed analysis of an applicant-performed search are submitted to the Office - was wrong; both applicants/practitioners and Examiners report that it is the interview that makes the greatest difference.

This result has led to a second program initiative, the "interview before first action" program (see "PTO Announces New Program to Reduce Pendency and Improve Patent Quality").  After the Examiner has performed a search, participants can have an interview to discuss the art.  Thereafter, the expectation is that the Examiner will be able to mail an allowance or a first action on the merits, which will be (presumably) the parts of the interview where the examiner and applicant could not reach agreement.  Such interviews have been available for many years.  (For many law firms, one of the purported advantages of a Washington, D.C. office in the old, cooperative days of the Patent Office was the ability to walk down the street and meet with an examiner to discuss an application prior to first action.  This practice was discouraged over the past few years, since it resulted in many instances with a first action allowance and a patent having essentially no prosecution file history.)  The pilot program is limited for now to the computer database arts; the Commissioner referred the curious to the PTO website for more information (alternatively, the curious could refer to the Patent Docs post on this pilot program).

The Commissioner announced a major initiative to bring the Office into compliance with its responsibilities under the Patent Cooperation Treaty, specifically with regard to its status as an International Searching Authority.  The Office currently complies with the time limits for providing a Chapter I search about 4% of the time.  There are currently 17,000 PCT applications unacted upon (i.e., no search has been performed).  The goal is to have these applications searched by the end of the calendar year, and to bring the Office into 80-90% compliance as soon as possible.  While admirable, the way this is being done may be problematic:  the Office has outsourced searching to two professional search firms for the 17,000 "backlogged" PCT applications, and intends to outsource 100% of PCT searching.  While not controversial in and of itself, it seems that these searchers will also be responsible for determining (and denoting on International Search Reports) whether a reference is novelty-destroying (an "X" reference) or precludes inventive step (a "Y" reference) according to the provisions of PCT Article 33.  This raises the question of whether these searchers are competent to make these determinations, and whether the Office has abandoned its responsibility to provide a proper PCT search.  Ironically, the Commissioner also stated that he thought such searches should be "fee neutral" to the Office - raising the possibility that applicants would be charged additional fees under the PCT for searches that may not be PCT-compliant.

Commissioner Doll next addressed the issue of examiner hiring efforts.  The Office has hired 1,200 new examiners each year for the past few years and will be doing so for the next few years, and these efforts will have swollen the examiner ranks to about 6,000 at the end of FY2008; this number is expected to reach 8,000 by the end of FY2010.  Since attrition has been a problem (in the "two steps forward, one step back" sense) with the examiner corps, the Commissioner was happy to say that overall attrition rates are at 8.5%, a number he compared favorably both with Federal government employees overall (11.2%) and employees at high-tech industries.  It also seems that the likelihood of becoming a Patent Office "lifer" goes up dramatically after these first three years; while the attrition rate for "new" examiners (those with less than 3 years on the job) was 15.5%, the attrition rate for years 4 through 30 is only 4%.  To increase the likelihood that examiners stay long enough for these statistics to apply, the Office has instituted a number of financial and lifestyle incentives.  Retention bonuses are the most naked form of gentle coercion (he did not specify the amount of these bonuses); in addition, the Office has instituted overtime and quality bonuses (the latter subject to negotiation with POPA).  There are also programs for "flat goal" work, where the examiner can commit to a certain production level (with, presumably, adjustments in salary for performance below the standard requirements); the Office will pay bonuses of up to $20,000 plus 3% of their base pay for those examiners exceeding the goal.  On the lifestyle side, the Office has a "hoteling" program, where examiners can work remotely.  An impediment to greater use of this program is the requirement (under Federal law) that employees must "report to their station" once a month.  The Commissioner mentioned a bill pending in Congress (S. 1000) that would loosen that requirement.  Finally in this regard, giving laptops to examiners having GS9 seniority or greater has almost doubled the amount of overtime these examiners work.  All of these initiatives are directed, according to Commissioner Doll, to effecting a reduction in the backlog.  Interestingly, another aspect of the Office's focus on the backlog is that the Office is targeting its examiner hiring to those art units most in need of backlog reduction.

A program that the Commissioner ascribes to Director Jon Dudas (who is "aggressively pursuing it") is a "worksharing" program, that is an offshoot of the Patent Prosecution Highway programs currently in place with the Japanese Patent Office and other offices, and soon to be established with the EPO.  The Commissioner drew a distinction between the programs, however, saying that the PPH program was "applicant-initiated" while the proposed worksharing program would be Office-initiated.  Under the PPH, an applicant having an examination in one office can have the results transmitted to a second PPH office, to expedite prosecution in the second office based on (successful) prosecution in the first office.  The worksharing program would also permit examination results to be transmitted between offices, although it can be expected that the offices will not have the applicant's incentive to transmit only positive prosecution results.  Commissioner Doll was particularly hopeful about the economies of scale that could be achieved by having available to the U.S. Office results of a Japanese Patent Office search of Japanese patents and applications (which are rarely a major part of the prior art considered during U.S. prosecution), and envisioned a "common" prior art database that could be used by all offices.  An amusing aspect of this program is the establishment of a PTO "Facebook" so examiners at the different offices can "get to know one another."  The worksharing idea will be further discussed in a meeting between the "Big 5" offices (the USPTO, EPO, JPO, Korean Patent Office and Chinese Patent Office) chaired by Deputy Director of the USPTO Margaret Peterlin, to be followed by a Director level meeting in several months.  Importantly, at least as currently proposed there are no "full faith and credit" provisions for one office to another.

The last part of Commissioner Doll's prepared remarks was a brief encomium to the EFS-Web electronic filing system, which has increased users from 2% to 70% over the past two years.  Calling those not using the program "technology dinosaurs," he offered to do whatever it takes to help those to get with the program.

Commissioner Doll's comments during the Q&A session were not particularly remarkable, except insofar as he stated that the now-enjoined new continuation and claims rules were never viewed as a "silver bullet" for solving the backlog problem.  He reported that the rate of increase in the backlog had slowed (to about 40,000 applications for FY2008), and suggested that the Office had not "given up" on the other pending rules packages (Markush, IDSs, biological deposits) that have been subject to public comment.  He strongly supported provisions of pending legislation that would give the Office fee-setting authority, and hinted that if they got it they would use it to establish disincentives to current continuation practice.  He repeated the Office policy that the "best" application was one where the applicant presented the "best" claims upon initial filing and came to an ultimate resolution in that case, and said the best way for that to happen would be if the Office could impose the Applicant Quality Statement obligation contained in S. 1145.  Using his "crystal ball," he predicted that the growth rate of new filings would be about 5% in FY2008 and at the same level over the next few years.  He characterized this as "healthy," saying that the variances in application filing rates of the last 20 years average about 6.5%, with some years being as high as 25% and others close to zero.  He opined that the Supreme Court's KSR decision might influence filing rates, and defended how the examining corps was applying PTO guidelines on implementing the KSR decision.  He also asserted that the Office had trained "every" examiner on the new guidelines.

With regard to patent reform legislation, Commissioner Doll said Deputy Director Peterlin and USPTO General Counsel John Toupin (at right) were on the Hill "almost daily" working for the legislation, and said the AQS provision was on his "wish list" as the single change that would improve patent quality.  He cautioned against "dumping" too much irrelevant material on the Office in the guise of an IDS, and used two examples.  One was the prosecution history of related applications, where merely filing the entire file history was disfavored.  Also a Patent Office no-no would be filing "boxes and boxes" of material from litigation (seemingly unaware that generating boxes and boxes of material is what happens in patent litigation).  He was similarly unconcerned about the risks of inequitable conduct allegations even for practitioners diligently attempting to comply with Rule 56, and backed Harry Moatz's interpretation of 37 C.F.R. § 10.19 that a practitioner is required to review every page of every reference submitted to the Office.

There was one note of disingenuousness in Commissioner Doll's responses.  He was asked whether a Quality Review official could overrule an examiner.  He said the quality reviewer merely provided a recommendation, because the statute gives primary examiners the authority to decide whether to allow a case, and a Supervisory Examiner (SPE) or even the Commissioner did not have the power to overrule them.  This could be the basis for an important practice tip, except that in the next breath he said that where there was a genuine disagreement with a primary examiner, the examiner could either withdraw the notice of allowability or the SPE would transfer the case.  Even though he said this occurs very rarely (twice in his 33 years, and he was decent enough to admit that in one case the applicant appealed and the Board sided with the applicant), it is perhaps an illustration of his limitations as Commissioner that he obviously didn't see how he had enunciated a distinction without a difference (i.e., that supervisory personnel exercise de facto veto power over the primary examiners).

Not surprisingly (but a little disappointingly), Commissioner Doll is not a big fan of blogs.  While he later backed off his original characterization of bloggers as people without enough to do, in fairness the question was asked with regard to websites that "rate" examiners.  Although understandable in thinking that it was more likely to contain brickbats than kudos, he has obviously not read one lately; there are a surprising number of bouquets among the criticisms, perhaps reflecting real differences between different examiners (which is something you'd think he would want to know).

Commissioner Doll said he valued the kind of face-to-face discussions like today's meeting to discuss how to improve the patenting system.  While that is certainly true, his ardor cannot hide the fact that the actions of the Patent Office over the past few years suggests to many that no one is listening to the patenting community.

Comments

[Dan Feigelson]

Curious that Doll concedes that it is not the ESD but rather Examiner interview that helps speed things along in accelerated examination, yet, not one to be confused by facts, he clings to the belief that the AQS will be a panacea to reduce backlog. Sounds to me like an implicit admission that the proposed AQS has nothing to do with achieving quality and everything to do with raising the cost of obtaining a patent so high that many parties will forego seeking patent protection.

[Kevin E. Noonan]

Dan-

I think the cost factor is a consideration, but I also think that PTO management truly believes that there are many applications being filed that either do not contain patentable subject matter, or that overclaim what is actually patentable. The problem is that even if that is the case, determining what's wheat and what's chaff is their job, one they are perfectly happy to shift to applicants.

Thanks for the comment.

[e6k]

Dan and Noon,

I can personally attest to the fact that many (90%+) of my applications have overclaimed what is patentable at least in the first set of claims or are not patentable at all.

"Curious that Doll concedes that it is not the ESD but rather Examiner interview that helps speed things along in accelerated examination, yet, not one to be confused by facts, he clings to the belief that the AQS will be a panacea to reduce backlog. Sounds to me like an implicit admission that the proposed AQS has nothing to do with achieving quality and everything to do with raising the cost of obtaining a patent so high that many parties will forego seeking patent protection. "

Let's be clear, "speeding things along" does not only equal having good art present at time of filing. The speeding of things along is achieved by compromises and quick conveyance of info about the app between the examiner and attorney iirc.

"determining what's wheat and what's chaff is their job,"

That's funny, I wasn't aware of any statutory requirement (or other requirement) for me to determine what is wheat and what is chaff. I am aware of a round about statutory requirement for me to determine what, in the most Current Set of Claims, is chaff. There is a difference, and I believe it would be to your credit to not forget that so that you can stop making outrageous assertations as to what our job is.

Just FYI, it is your responsibility to determine what you think is wheat. I'm merely there to see if I can prove that it's chaff.

In addition I would not like to transfer the finding of what is chaff to the applicant. Mainly because they would bonk it up even more often than I do based on what I see spewing forth regularly in Amendments.

If you don't believe me about the 90+% I invite you to join me for coffee one day at Starbucks and I will hand deliver you a copy of the front page of each of the apps on my docket and you can look them up when you get home and see the overclaims. I can be found regularly on PO, though your site is so good about the information (biased as you attempt to make it) it provides I'll be checking in from time to time.

[Kevin E. Noonan]

Dear e6k:

The part of the statute that places the burden on the office is the part that says: A person is entitled to a patent unless . . .. Although I am sure that there are applicants who overclaim (probably because they don't know the full extent of the prior art), the goal on this side of the fence is to write a claim that is just on the patentable side of the art, with sufficient dependent claims to provide support for more limited scope in the event that the examiner finds art unknown to the applicant. Reasonable people may differ, but if applicants don't protect their inventions as vigorously as they can, a competitor will simply practice the invention in the interstices that they did not protect. (Maybe if we have that cup of coffee at Starbucks I can show you some examples of this kind of behavior).

I don't think our job is to throw everything against the wall and make you see what sticks, and that's why a prefile search is a good idea - I recommend it to all my clients.

The point that should not get lost is Commissioner Doll's statistic that the examiner interviews were the most productive part of the Accelerated Examination program, rather than the ESDs. As we discussed in a later post, that suggests that a modicum of cooperation, rather than conflict, between the office and applicants (and their counsel) might serve everybody - the public with high quality patents, the Office with a reduced backlog and applicants with patents that are less likely to be invalidated in court.

Thanks for the comment.

[in-house]

The summary states the PTO has seen a benefit from the pre-first office action interviews. The summary also states that the Office is stimulating Examiner retention by encouraging "hoteling" - requiring the Examiner to be at the PTO just once a month (and that, at present, it appears only by reason of a federal statute). My question - How am I to schedule an interview with the Examiner if s/he is only required to be at the PTO once a month? I am sure I won't be the only person (applicant/SPE/or other commitment) wanting the Examiner's attention on the one day that s/he is at the PTO. Has anyone else considered these basic logistics?