By
Sarah Fendrick --
The
U.S. Patent and Trademark Office and the Patent Public Advisory Committee (PPAC) have created a project to
improve the overall quality of patents, reduce patent application pendency, and ensure that granted
patents are valid. The improvement
initiative does not involve changes in patent law or substantive new rules, but
rather the USPTO is seeking public comment on a number of categories identified
in a Notice published in the Federal Register (74 Fed. Reg. 65093) on December 9, 2009.
In
the past, two official metrics of examination quality were employed by the
USPTO, the Allowance Compliance Rate and the In-Process Review (IPR) Compliance
Rate. The Allowance Compliance Rate
was determined by randomly selecting a sample of allowed applications and
reviewing the patentability of the claims, the completeness of the record, and
the quality of the examiner's search. The IPR Compliance Rate was determined by randomly selecting a sample of
applications that had Office actions issued prior to allowance and reviewing indicators of quality such as whether the rejections made in the Office
action were proper, whether the examiner clearly articulated the reasons for
rejection, the quality of the examiner's search, and the propriety of any
restriction requirement (for a full list of factors, see Notice). The IPR Compliance Rate during
2005-2009 encompassed both final and non-final Office actions. However, in 2010, the IPR Compliance Rate was redefined to include only non-final office actions and the Allowance
Compliance Rate was changed to Final Rejection/Allowance Compliance Rate.
In
an effort to improve the quality of patents and to improve upon the current
metrics of examination quality, the USPTO has identified a number of categories
where public comment is being sought. The first category includes currently implemented
quality measures and future measures not yet adopted. Regarding current measures, the USPTO hopes to receive
comments on how effective the current procedures are for ensuring the quality of
patents. Of particular interest are methods for finding the best prior art, obtaining a comprehensive
initial application, providing first Office actions that include clear
explanations of all issues raised in the action, receiving clear and
comprehensive responses to Office actions, and proper use of interviews. To address the issue of prior art, the
Office is looking for comments concerning search techniques and procedures that
could be used to locate the best prior art as well as technologies where it appears
the best prior art is not being identified by examiners. To ensure the receipt of comprehensive
initial applications, the USPTO is soliciting comments on what current USPTO guidelines
prevent effective preparation of comprehensive applications as well as methods
that can be implemented to measure the quality and completeness of the
submitted application. Comments
are also being sought on what aspects of an initial Office action will enhance
quality and how examiners can best communicate to applicants what is needed in
a response to the Office action. Similarly, the Office is requesting comments that will ensure comprehensive
responses to Office actions. Specifically, the Office is asking for comments on what USPTO guidelines
stand in the way of applicants when preparing a response that will allow for
efficient examination.
The
second category pertains to the stages of monitoring. Within this category, the USTPO is looking for comments on
procedures that may reduce patent pendency. More specifically, the USPTO is
considering at what stage and how frequently quality monitoring procedures
should be implemented. In addition, public
input on how to effectively increase quality at initial stages of prosecution is being sought by the USPTO.
The
third category concerns pendency. Under this category, the Office seeks comments on whether the quality of
prosecution and examination of an application, and quality of the granted patent, can be improved while also reducing the pendency of the process. The USPTO also seeks input on how continuing
applications influence the goal of pendency and quality.
Category
four seeks comment and feedback on pilot programs and their role in ensuring
quality and pendency.
Category
five calls for comment on past USPTO surveys of the patent community and suggestions
for improving future surveys. The
Customer Panel Quality Survey was launched in 2006 to receive input from
frequent users of the USPTO concerning examination quality issues as well as a
means for customers to provide feedback to the USPTO regarding quality
measures. Past participants of the
survey were top filers (law firms, organizations, or individuals that have
submitted six or more applications in the previous year). Survey results are analyzed quarterly
and have on average 1100 participants per quarter.
Category
six regards feedback on existing tools which can aid the USPTO and its users to
enhance the quality of USPTO processes. Specifically, feedback on software tools that will facilitate
monitoring, search tools, claim analysis tools, and case law identification
tools is being sought.
Finally, under category seven, the USTPO seeks comments on methods that can
incentivize applicants and USPTO personnel to participate in efforts to improve
the quality of patents.
Individuals wishing to submit comments must do so on or before February
2, 2010. Each comment should
include: (1) the name and affiliation of the individual responding, and (2) an
indication of whether the comments offered represent the views of the respondent's
organization or are the respondent's personal views. The Office indicates that it prefers to receive comments via
the internet at [email protected]. Alternatively, comments can be submitted by regular mail to: Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Kenneth M. Schor and Pinchus M. Laufer. The Office warns that parties should not submit information
that they do not wish to be publicly disclosed or made electronically
accessible.
Whether or not the Office actually implements changes based on suggestions received from members of the public, it's refreshing and encouraging that the new regime at the USPTO appears to be making a serious effort both to improve procedures and to engage the public in a discussion of significant patent law issues. The new USPTO's approach is creative, pragmatic, and a welcome change.
http://www.GeneralPatent.com
Posted by: Gena777 | December 21, 2009 at 05:27 PM