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Thursday, 15 September 2016

How to Improve Patent Quality: Conference Highlights

Everyone agrees (right?): improved patent quality makes the patent system better.  This was the premise of a recent Santa Clara-Duke Patent Quality conference (part one). Aimed at the USPTO’s Enhanced Patent Quality Initiative, the conference brought together administrators from the USPTO, practitioners and academics.  I've selected some highlights of the conference: 

The first panel titled “Claim Clarity, Consistency” discussed the lack of consistently understood claim term meaning.  This panel became a reference point for the rest of the conference. Notably, the discussion moved toward the construction of terms in light of the prosecution history, and examiner behavior.  Charles Duan of Public Knowledge and Professor Peter Menell both advocated for increased transparency concerning discussions between patent applicants and examiners.  Both seemed to indicate that full publication of examiner interviews should be encouraged.  Valencia Martin-Wallace, USPTO, noted that examiners and applicants may not want publication of full examiner interviews.  She also noted that this could be related to issues with the examiner trade union.  Menell took the position that this is a fundamental issue concerning due process and the information must be published.  Menell advocated for the use of simple clear forms for patent claims and redline versions of the patent document available for the public.

The next group of speakers focused on the apparent tension between productivity and quality. The U.S. speakers mostly assumed a trade-off between the two goals of productivity and quality.  Much of the discussion concerned examiner time—that USPTO examiners need more to find prior art.  Notably, Robert Marek, Government Accounting Office (GAO), discussed a GAO study that indicates examiners desire more time to conduct complete examinations.  The study recommends, in part, a clearer definition of a thorough search, and the development of metrics indicating patent quality.  Alfred Spigarelli, European Patent Office (EPO), disagreed with the trade-off premise, and stated that at the EPO, a focus on quality results in productivity.  He argued the ultimate goal is always quality, from which productivity flows. 

Professor Colleen Chien noted EPO examiners spend significantly more time searching for prior art than USPTO examiners, and cite more non-patent literature than USPTO examiners.  Professors Melissa Wasserman and Michael D. Frakes discussed their study which indicates that promoted USPTO examiners may generally grant more patents because of less examination time as they are promoted.  Professor Jay Kesan found in a recent study that the average number of words in main independent claims is about 10% more (20 words) in reviewed EPO claims than USPTO claims.  This indicates main independent claims may be narrower in the EPO than the USPTO.  This effect was consistent across all technology areas. 

In a panel discussion entitled, “Getting it right the first time,”  the discussion returned to clarity. Arguably, there is an issue with practitioner claiming strategy and practice, which may result in poor quality first office responses and a longer examination period—prolonged through requests for continued examination.  The strategy is to claim broadly (and vaguely) and shift the burden to the examiner to make the applicant narrow the claims, which preserves the ability of the applicant to argue the claim covers more later.  Laura Sheridan, Google, argued for an abolition of requests for continued examination and the use of a panel of examiners to review claims.  Sandy Swain, Microsoft, supported better communication with examiners.  She noted that it can take a long time for examiners to understand the invention, and more early communication would improve first office action.  Professor Stephen Yelderman argued fees for requests for examination and additional claims should be higher.  Alan Marco, USPTO, found in a recent study a correlation between small entity status and number of domestic parents with litigation.  The number of requests for continued examination did not correlate as strongly with litigation. 

Are you feeling lucky? 
The next panel included several interesting proposals.  Professor Arti Rai is working on a paper analyzing Track 1 and prioritized examination.  She notes that the cap of 10,000 applications may not be optimal and many applications are by large firms such as Google. Professor Brian Love argued for increasing maintenance fees and decreasing Patent Trial and Appeal Board fees at the USPTO.  Professor Oskar Liivak proposed essentially following the law and making overclaiming a felony under 35 U.S.C. section 115.  

Finally, David Kappos, former head of USPTO and current partner at Cravath, Swain and Moore, reviewed how the USPTO has historically worked on patent quality.  He pointed out that the USPTO has been applying the changing standards and rules set by the courts.  He stated that the U.S. Supreme Court’s Alice test is not a helpful flexible rule, but arbitrary and vague.  He believes that the courts and USPTO are placed in a position of having to apply an impossible standard and should not be blamed for their application of said standard.

The conference is an example of the USPTO’s willingness to engage interested constituencies to provide better service.  The USPTO should be applauded and encouraged for its continued efforts. For more details about the conference, please see the conference resources document. Part two of the conference, also organised by the Santa Clara High Tech Law Institute, the Duke Law Center for Innovation Policy, and the USPTO, will be held in December at the USPTO.


MaxDrei said...

On how to trade off quality and productivity, the USPTO and the EPO cannot meaningfully be compared. That's because the EPO is master of its own house and the USPTO is not. Who makes the law of patent validity in Europe? The EPO's Enlarged Board of Appeal. Who in the USA? The Supreme Court of the USA and it makes law that i) frustrates any USPTO drive towards productivity and quality and ii) encourages Applicants and their lawyers to obfuscate and work diligently away from clarity in the claims.

So of course Mr Spigarelli sees it all as very simple. Pure self-interest drives Applicants at the EPO to draft clearly. EPO separation of search and examination, and strict enforcement of EPC Rules by DG1, makes it imperative that i) from the outset, Applicant presents an exhaustive set of dependent claims and ii) DG1 searches them all, at the outset, exhaustively. That way lies both quality and productivity. Simples. But not yet at the USPTO.

Now that the USA is on a First to File system however, Applicant self-interest in that country will kick in, gradually to improve drafting in the USA and, in its wake, will come better quality and productivity. How so? Because the US will now find it has to ratchet up its "written description" requirement to somewhere near the EPO's exacting Gold Standard for disclosure, in order fairly to judge issues of novelty, priority and added matter.

Anonymous said...

IPGuru says....

Improving patent quality flows both ways, with the quality of the drafted claims submitted for examination being an equally important aspect in the equation. The article mentioned situations where the examiners don't understand the invention - that's a clear indictment of the patent attorney who drafted the claims, isn't it? A strategy of drafting overly broad claims and seeing what sticks is not helpful for anyone (other than the attorney charging fees to his client).

The examiners in the USPTO need more time, better IT support and investment to help improve the quality of their work. They are working hard in less than perfect circumstances and we should all support them. Sharing lessons learned with the EPO is a good start, but attorneys need to do their part too, IMHO.

Anonymous said... says:

"The U.S. speakers mostly assumed a trade-off between the two goals of productivity and quality...snip...Alfred Spigarelli, European Patent Office (EPO), disagreed with the trade-off premise, and stated that at the EPO, a focus on quality results in productivity. He argued the ultimate goal is always quality, from which productivity flows."

At the EPO, "Early Certainty" equals quality with timeliness. And timeliness increases productivity, since examiners are given targets on that. The trade-off is merely hidden and fully loaded onto the individual examiners' shoulders.

"Professors Melissa Wasserman and Michael D. Frakes discussed their study which indicates that promoted USPTO examiners may generally grant more patents because of less examination time as they are promoted."

At the the EPO, promoted and non-promoted examiners have the same examination time, but promoted examiners likely grant more.

Same here, same there, same everywhere ...

Anonymous said...

For any patent office, it would be good to separate search and examiner processes. The two must be done by two separate departments so that each has good time to perform their part. This era of internet throws up tonnes of prior art.

Provide good time for the examiners to understand the inventions that they need to examine. They should be allowed to consult (in a clear transparent way, with written documentation of the conversations) applicant at all times during the search and examination.

Limit the number of claims per application (10-15 only), per category for a thorough search and examination.

It would be good to ask prior art directly from the inventors -- as opposed to the patent offices of corresponding applications. Many come up with the most relevant ones only.

Ex-examiner now patent attorney said...

The EPO likes to give the impression that it's possible to achieve certainty for the applicant and for the public by carrying out a high quality examination. This is bottucks. EPO search and examination is trivial compared with the effort expended when there is an imminent risk of winning/losing a lot of money. It's a useful first approximation - nothing more.

Anonymous said...

It is true that a high productivity or production does not necessarily lead to a lower quality. If people know what to do and how to do it, it is possible. However the prerequisite is that people have been correctly trained.

I have strong doubts that this is the case at the EPO in view of the tremendous production pressure put on newcomers. How can it be that after three years a newcomer is fully proficient in search and in examination? In the past, when search and examination were separate, the three year goal was for each function, now only for the mixed one.

Anyone believing that the EPO searches all dependent claims is believing in father Christmas, not to say more, and Mr Spigarelli should know better.

If an examiner finds an X document, if he finds one, then he stops the search. If he wants to have a good production and achieve a quick grant, he will find nothing but a pseudo X or a lot of A documents. Examiners are not all to be blamed, they do what they are told, and anyone resisting this will be mowed down.

Look at case law of the boards of appeal. It happens that the Board has to quote new prior art when deciding on appeal following refusal of an application. If the search is so wonderful, why would the boards be led to bring in new prior art? Whether it is correct to do so is an other point, but this is what is happening.

It is certain that if the claims are correctly drafted a search is easier to carry out. Simply trying to push the blame towards applicants is a bit too easy. The responsibility is shared in the present situation.

Simply churning out searches and grants is not necessarily a sign of quality. The objectives according to the plan are achieved, if not overthrown. Remember what happened to "planned" economies. But the top management of the EPO can feel happy. They are managers.... but certainly not leaders. But this is another story.

Glad to be out of the madhouse said...

"Alfred Spigarelli, European Patent Office (EPO), disagreed with the trade-off premise, and stated that at the EPO, a focus on quality results in productivity."

As a former EPO examiner, and current practicing attorney, I had to bite my tongue not to scream a nasty expletive when I read that.

Cynic said...

Glad to be out...,
In fairness, he didn't say a focus on high quality. Change quality to change production is an obvious relationship.

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