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By Tony Dutra
Feb. 24 — Patent and Trademark Office Director Michelle K. Lee has made patent quality a top priority of her administration. But the difficult “balance” necessary to achieve it requires consensus among customers of its services with different goals.
Lee told Bloomberg BNA in a Feb. 22 interview that she has implemented “a dozen or so” initiatives to increase quality, highlighted by a newly formed patent quality department with its own commissioner.
“The public has told us they want us to focus on this, we know we need to focus on this, and we think it's the right thing to focus on,” she said.
Most of the initiatives are aimed at improving internal processes and, in some cases, that change will increase costs. The constituencies currently most active in providing feedback on those initiatives—patent applicants and prosecutors—are precisely the ones who will pay the higher costs.
Lee had hoped for more feedback from those with the most to gain from increased quality in the PTO's end product: granted patents. But that constituency is made up of users of patent technology, those who design around patents, “people who buy and sell patents” and adjudicators of patent disputes. And shorter-term process improvements are important to satisfying them, in the long-run, that the PTO is doing its job.
“That's why everybody's interest needs to be provided,” Lee said.
Lee said that she has been pleased with the feedback she hears in her travels to speak with stakeholders about the quality-related initiatives implemented so far. She described the comments as “positive, but not the end point.”
She said she has the ability to devote more time and effort to quality improvements now—because the 2011 America Invents Act made the office more financially secure, including allowing it to set its own fees to recover costs, and because large backlogs in unexamined patents and requests for continuing applications are being reduced.
Also “more incumbent on the office” lately, she said, is to issue “the very highest quality patents” to address the general concern among patented technology users about “businesses whose model is to buy patent assets, sometimes preferring patent claims that are broader and vaguer,” a reference to those non-practicing entities typically called patent trolls.
To that end, the office's “clarity of the record” initiative is of particular importance.
That has been a PTO focus since a two-day quality “summit” in March: Examiners in a pilot program will record more patent prosecution details, including claim construction, reasons for allowance and how applicants overcame rejections. The initial focus is on reducing ambiguity in functional claiming, a concern primarily in software and business-related patents most often asserted by NPEs.
In the current fiscal year, examiners have spent an average of 21.8 hours per application, according to the office. Lee said that a purpose of the pilot is to see how much more time it will take to put greater detail into the record.
The PTO is also in the midst of revising patent fees, to be implemented in 2017. Lee acknowledged that quality-related costs will be “a piece of the expected fee increase, but not that only.”
The fee increase is likely to be on the acceptable side of the boundary between quality and impact on PTO constituencies. Whether a “second set of eyes” review of every patent granted could be justified is likely on the unacceptable side, though Lee didn't commit to that in the interview.
According to statistics provided to Bloomberg BNA, the Office of Patent Quality Assurance spends approximately 3 hours per review of an examiner office action and will look at only about 2 percent of them—even under the new Enhanced Patent Quality Initiative. A 15 percent increase in review time—if devoted to each issued patent—would have to be passed on, either in issuance or post-grant maintenance fees.
Lee identified five other initiatives in the works that could still benefit from community comments and suggestions.
• Global dossier. A collaboration among the five major patent offices allows examiners from any one office to see how their counterparts are reviewing parallel patent applications. If, say, a Chinese examiner cites Chinese-language prior art, the USPTO's examiner has options to get machine or certified translations.
• Data capture. The agency is about to introduce a Master Review Form, so that supervisory review of an examiner's office actions will follow specific formatting instead of being free-form, as it is now. Lee said that the agency would post the form on its website in March. She encouraged stakeholder commentary on whether the proposed form will be tracking meaningful data points.
• Quality metrics. The office has abandoned its “composite” quality measurement and broken out the seven components, but again most are directed to internal processes. Only a measure of “applicant and practitioner satisfaction with patent examination quality” is external, and Lee acknowledged that reviews of other external constituencies are not yet being captured.
• Post-grant outcomes. The Patent Trial and Appeal Board's decisions on AIA-enabled post-grant patent challenges will soon be used to create a number of lessons the office can “transfer back to the examiner corps,” Lee said.
• Case studies. The comment period has ended, but the office will still accept suggestions for case studies to identify concerns across the examiner corps, as compared to its one-by-one review of patent applications' examination records. Lee said that “more than a handful of good suggestions” were provided so far, many of them requesting trends on how the corps is handling patent eligibility questions under 35 U.S.C. §101 in light of recent Supreme Court decisions.
To contact the reporter on this story: Tony Dutra in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Mike Wilczek in Washington at email@example.com
Any comments should be sent to WorldClassPatentQuality@uspto.gov.
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