Request for Comments on Enhancing Patent Quality

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Martha Farmer
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1 Request for Comments on Enhancing Patent Quality 80 Fed. Reg Patent Relations with the USPTO Committee Chair - Esther Kepplinger Wilson Sonsini Vice Chair - Ken Nigon RatnerPrestia May 12, 2015

6475 Patent Relations with the USPTO Committee

2 Overview Three Pillars of Patent Quality Excellence in Work Product Excellence in Measuring Patent Quality Excellence in Customer Service Six New Quality Proposals Four Questions

3 Work Product Applicant Requested Prosecution Review Applicant cites serial number to OPQA Placed in a pool for selection Conceptually Approved Would Applicants be allowed to submit comments? Would there be a record of Applicant s request? Would entire file wrapper be reviewed or just last Office Action?

Applicants be allowed to submit comments?

4 Work Product Applicant Requested Prosecution Review (cont.) How are Applications selected from the Pool? Would Examiner or Applicant behavior be a factor in selecting application for review? Does the Office have sufficient resources to review every application in the pool? What would be the outcome of the review? Resolution of issue? Examiner training? OPQA should not replace Supervisory Examiner in ensuring quality work product.

Does the Office have sufficient resources to review every application in the pool?

5 Work Product Automated Pre-examination Search Examiner requests automated search by STIC before examination Keywords extracted from entire application Search based on frequency of occurrence Office asks for information on other search products Only U.S. patents and publications

entire application Search based on frequency of occurrence Office

6 Work Product Automated Pre-examination Search Examiner must perform additional search after analyzing claims and specification Claims expanded before search Stemming, word grouping, conceptsemantic and relational searching Should be expanded to include PCT applications and foreign references Applicant interview before additional search

Stemming, word grouping, conceptsemantic and relational searching Should be expanded

7 Work Product Automated Pre-examination Search (cont.) References found in automated search should be identified as such Examiner interview shortly after receiving search results to guide Examiner search Automated search strategy should be made part of the record PLUS tool should be made available to the public to understand quality of searches

shortly after receiving search results to guide Examiner search Automated search

8 Clarity of Record Make Claim Construction Explicit Should be evident from prosecution history Extra burden on Examiner Made explicit when requested by Application Make clear that it is a BRI construction If mandated, implement as opt-in pilot program Determine best way of presenting information

by Application Make clear that it is a BRI construction If mandated,

9 Clarity of Record More Information Recorded for Interviews Interviews valuable because they allow free-form discussion of invention Important to have reasons for any decision made during an interview of record Recording too much information would discourage interviews Burdensome on Examiners May inhibit Applicants

for any decision made during an interview of record Recording too much

10 Clarity of Record Detailed summary of Reasons for Allowance Should not be necessary reasons for allowing an application should be clear from the record Generally ignored in court

11 Quality Metrics Current QIR Minimizes Actions per disposal Prosecution reopened after Final RCE disposals Two or more non-final Actions Restrictions after first Action

12 Quality Metrics Current QIR QIR measuring wrong data production not quality Penalizes Examiner for correcting errors Better metrics Number of Actions to final disposal SPE evaluation should encourage training and supervision

correcting errors Better metrics Number of Actions to

13 Quality Metrics Better metrics Percentage of applications with interviews Level of difference in Office Actions Number of prosecutions reopened after appeal Percentage of claims invalidated in postgrant trials, appeals or court proceedings Entry of Amendments after Final to find allowable subject matter

appeal Percentage of claims invalidated in postgrant trials, appeals or

14 Quality Metrics Better metrics (cont.) Encourage Examiner initiated interviews Short survey for practitioners Short Not in the record Not traceable to application Define key components of a quality patent Align metrics to encourage quality

practitioners Short Not in the record Not traceable to

15 Compact Prosecution Proposal to allow entry of amendment after Final with a fee Amendment should be considered quickly Next action non-final if new issues raised Examiner encouraged to work with applicants to identify patentable subject matter Expand QPIDS to allow non-certified references

if new issues raised Examiner encouraged to work with applicants to

16 Compact Prosecution RCE practice has undermined compact prosecution Count system encourages prolonged prosecution AFCP 2.0 not working First action interview program needs to be reworked Multiple RCEs should result in intervention by supervisor

17 Compact Prosecution Formal interview request requiring response for Examiners who shun interviews Emphasize professionalism for practitioners and Examiners Improve legal training for Examiners Emphasize need for substantial evidence on the record

professionalism for practitioners and Examiners Improve legal

18 Compact Prosecution Thorough initial search Current searches often piecemeal Address only independent claim limitations Encourage early interview to gain mutual understanding of invention More guidance to Examiners on amendment that raise new issues

Encourage early interview to gain mutual understanding of

19 Compact Prosecution Applicant participation in Appeal and Pre-appeal conferences Resolution specialist Option to replace pre-appeal conference Discussion with Examiner, SPE, Specialist and Applicant Act as mediator Identify allowable subject matter or proceed to appeal

pre-appeal conference Discussion with Examiner, SPE, Specialist and

20 Compact Prosecution Better Approach Redesign system balancing quality and cost Effective use of Examiner time for searching and analysis Revise count system only after system is redesigned

21 Customer Service In Person Interviews Allow in-person interviews at patent depository library near Examiner Conceptually Supported Allow interview at other Federal Venues Interview Specialist at main and satellite offices In-person contact - Examiner and SPE by video conference

22 Customer Service In Person Interviews (cont.) Expand and promote video conference interviews Make examiners use their cameras Educate practitioners SPE presence

23 Other Changes Identify applications that need more resources Multiple continuations Post-grant proceedings or litigation in family Feedback from PTAB trials Improper Examination Should new prior art have been found?

24 Other Changes Focus SPEs on training Training should be primary performance metric for SPEs Use metrics to identify underperforming examiners Excessive RCEs Same references cited in different cases Limited types of rejections

25 Thank You

ADOPTION OF METRICS FOR THE ENHANCEMENT OF PATENT QUALITY FISCAL YEAR 2011

ADOPTION OF METRICS FOR THE ENHANCEMENT OF PATENT QUALITY FISCAL YEAR 2011 I. SUMMARY The United States Patent and Trademark Office (USPTO or Office) is adopting new procedures for measuring the quality