How to Improve quick updates to Patent Quality: Conference Highlights

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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.

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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.

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Thursday, November 30, 2017

How to Improve quick updates to Patent Quality: Conference Highlights

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