The USPTO indicates that “excellence in work products” is one of the “pillars” of patent quality, but pursuing this objective has been difficult. First, the USPTO considers “work product” synonymous with the soundness of the examiner’s decision – without recognizing that the quality of the office action, as an expression of that decision, is a separate and equally crucial goal. Second, the USPTO struggles with its own perception that “quality” cannot be measured directly or specifically, and has relegated its metrics to satisfaction surveys, where reviewers rate work product quality “on a scale from 1 to 10.” The resulting metrics are so uninformative that even USPTO management declines to use them for anything except PR.
A different approach to quality assessment is available: data mining techniques can be applied to the contents of office actions, in order to identify patterns of examiner behavior that reflect problems with examination quality. Detecting and quantifying the occurrence of such behaviors – over the entire output of each examiner, as well as of art units and the USPTO as a whole – may yield specific, objective metrics of examiners’ compliance with examination policy and best practices.
Continue reading Measuring Examination Quality Through Data Mining of Office Actions
Patent quality is a hot topic at the USPTO – not only taking center stage on USPTO Director Lee’s radar, but also prompting a two-day Patent Quality Summit. However, this effort by the USPTO seems peculiar, because the issuing patent – as a work-product or deliverable – is entirely drafted by the applicant. After verifying that the application meets all of the requirements of 35 USC and 37 CFR, the USPTO’s actual contributions to the issuing patent are the Notice of Allowance – a one-page boilerplate form, occasionally with a cursory statement by the examiner that the claims are novel – and the provision of a serial number and a shiny ribbon.
Rather, the USPTO’s primary work product is the office action – a statement of reasons for allowing or rejecting or allowing particular claims. While the USPTO scrupulously monitors examiners’ output in terms of quantity and timeliness, remarkably little attention is paid to evaluating the quality of the content of office actions. And a detailed (or even cursory) evaluation of office actions will reveal abundant opportunities for improvement that the USPTO does not seem to appreciate.
This post is a call to action for Director Lee and USPTO officials: The USPTO can best contribute to the “patent quality” issue by closely evaluating and striving to improve the contents of office actions.
Continue reading Hey, USPTO: To Improve Patent Quality, Improve Office Action Quality
“Patent reform” initiatives are appealing in view of a number of perceived problems, such as the thoroughness of patent examination, the readability of the patent document to non-professionals, and the extreme costs of both patent enforcement and defense. Advocates of patent reform therefore propose a host of measures to address these objectives and lead the patent system to a brighter future.
However, our current body of patent law is a delicate balance of interests, and efforts to reduce one problem may create or exacerbate problems in other areas of the patent system. This post explores some of the objectives of patent reform that are in direct conflict, and among which deliberate choices must be made while proposing patent reform efforts.
Continue reading Cross Purposes in Patent Reform Efforts
Patent examination and patent prosecution are often regarded as adversarial processes: the practitioner pushes for an allowance with broad patent scope; the examiner pushes out rejections and seeks narrow claims. The process has often been described as a zero-sum struggle over the outcome.
However, today’s patent system is deeply affected by the attention of other parties: competitors and accused infringers; the federal courts, including the Supreme Court; and the public and Congress. Their attention and input require careful consideration of additional factors beyond the outcome, including the enforceability of the patent, the reliability of the patent system, and public perception. These factors have fundamentally altered the relationship between examiners and practitioners: we are not adversaries, but collaborators with the objective of issuing the right patent for each invention.
Continue reading The New Practitioner/Examiner Relationship: Collaboration For Valid Patents
Interviews between applicants and examiners can be very productive for moving cases through prosecution. Accordingly, the USPTO has implemented a First Action Interview Pilot Program (“FAIP”), in which applicants and examiners conduct an interview before the first action on the merits. This objective is sound: an open conversation, before the examiner has established a position, can educate the examiner about the invention, and allow the examiner to focus the first search and the first office action on the most important claim elements.
However, as currently implemented, the program exhibits significant disadvantages that diminish the achievable rewards. Indeed, an application that is enrolled in the First Action Interview Pilot Program (FAIP) may incur significant disadvantages over ordinary examination that exceed the benefits of the program.
Continue reading First Action Interview Pilot Program: Good Idea, Flawed Process
On Wednesday afternoon, I attended the USPTO’s public forum about the latest Interim Guidance on 101 Subject-Matter Eligibility. This session had the distinction of providing a genuine, open dialogue between the patent bar and the USPTO. Practitioners expressed their praise, criticism, and concerns for the guidance without much padding. USPTO representatives spoke with exceptional candor about the background of the latest draft of the guidance, and their constraints and hopes for future drafts.
On the whole, the session was richly informative about the background of the Interim Guidance; the different perspectives of the USPTO and the patent bar; and the issues that future versions of the guidance may address.
Continue reading USPTO Public Forum on Interim Guidance for Subject-Matter Eligibility
Although many aspects of the Alice opinion are unclear, one definite result is that Alice did not hold that “business methods” are categorically excluded from patent protection.
This result raises the question: What types of business methods would be patent-eligible under Alice? This article considers some hypothetical business method inventions, and how such inventions might be claimed in a manner that is likely to satisfy the heightened patent-eligibility requirements of Alice.
Continue reading Post-Alice Patent-Eligible Business Methods
Imagine a federal taxation scheme where your taxes are determined by an IRS agent, who is empowered to use “common sense” in setting your taxes at a “fair” rate. Or a Transportation Security Authority where security guards are allowed to admit or exclude passengers from flights based on whether or not they look “suspicious.” Or a Bureau of Motor Vehicles where your driving rights are issued or withheld based on whether or not the officer thinks you’re a “safe” driver.
Government agencies that allocate legal rights are never based on such discretionary mandates, for a large number of plain and obvious reasons. Yet, recent trends in patent law have elevated examiners’ discretion to dominate the formerly rule-based, evidentiary process – such that the outcome is primarily driven by the personal philosophy and temperament of the patent examiner.
Many practitioners have noted the existence of this trend, and some of its effects. The purpose of this article is to explore the sources of such discretion – the particular opportunities in the examination process that are amenable to arbitrary decisions – and that are routinely exploited to compel the outcome toward the examiner’s desired result.
Continue reading The Power of the Pen: The Role of Examiners’ Discretion in Patent Examination
For over 30 years, every major CAFC or SCOTUS decision about 101 patent eligibility – every single one, including Bilski, Mayo, and Alice – has compared the invention under consideration with the classic example of patent-eligible subject matter at the heart of Diamond v. Diehr. Indeed, such frequent citation and approval of Diehr’s rubber-curing invention by these later cases suggest that it is a quintessential example of patent-eligible subject matter.
However, these citations are deeply puzzling, because Diehr’s claimed invention appears to violate all of the Alice Court’s patent-eligibility rationale.
Continue reading The Main Event: Alice v. Diehr
The Alice decision has been heralded as the “end of software patents,” the “end of business method patents,” the “end of patent trolls,” etc.
However, it is difficult to square such characterizations with the actual Alice opinion, which (1) centrally focuses on the absence of specific software in the patent claims; (2) refuses to state that business methods are categorically unpatentable; and (3) makes no reference to the business models of the litigants or the intended uses of the patents.
Rather, the Alice decision has forged a tool that enables the invalidation of patent claims, via dissection into a concept that can be dismissed as “abstract,” and a non-inventive remainder (i.e., implementation) that can be dismissed as “conventional” engineering.
Notably, this dissection technique can be applied irrespective of the field of technology; irrespective of novelty; irrespective of the scope and form of the claim. It can be applied irrespective of whether the patent is “good” or “bad,” and irrespective of how the patentee intends to use the patent. And the expansive manner in which the PTAB and various courts are applying the Alice decision is steadily moving patent law in this direction.
Continue reading The Alice Trajectory