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By Tony Dutra
March 25 — Improvements in patent quality will require a collaborative effort between the applicant and examiner, but the examiner's role as adjudicator of what claims to allow or not allow—as protector of the public domain—conflicts with applicants' need to be zealous advocates for their scope-seeking clients.
That paradox dominated the opening session of a two-day Patent Quality Summit being conducted March 25-26 at the Patent and Trademark Office’s headquarters in Alexandria, Va.
The paradigm of an adjudicator, Paul R. Michel, former chief judge of the U.S. Court of Appeals for the Federal Circuit, perhaps grappled with the dichotomy best in his call for “activism by the examiner.”
Michel said that the examiner has all the power, and the applicant can either comply with the examiner’s request to collaborate or accept the examiner’s judgments as determinative.
And with universal support among the first panel's speakers for a PTO proposal to improve quality by procedures that would “enhance the clarity and completeness of the official record during prosecution of an application,” the applicant’s non-response could be treated as its “collaboration” if the patent is later subject to litigation.
The summit will address six proposals put forth by the PTO in a February Federal Register notice:
1. Applicant Requests for Prosecution Review of Selected Applications: a mechanism for an applicant to request review, by the Office of Patent Quality Assurance, “of the prosecution of a particular application where the applicant identifies an issue that would benefit from further review.”
2. Automated Pre-Examination Search: an update to the tools—the office currently uses only a “limited” Patent Linguistics Utility Service search tool—to provide a list of possible references as a starting point, so that “the examiner is better positioned to begin a substantive examination, which includes their own search of the prior art.”
3. Clarity of Record: “procedures to enhance the clarity and completeness of the official record during prosecution of an application.”
4. Review of and Improvements to Quality Metrics: ways to improve the agency's existing Quality Composite Metric for evaluating quality.
5. Review of Current Compact Prosecution Model and the Effect on Quality: “whether the current compact prosecution model should be modified,” as well as alternatives to requests for continued examination and appeals to the Patent Trial and Appeal Board.
6. In-Person Interview Capability with All Examiners: expanding in-person interviews to be conducted at locations other than PTO headquarters and satellite offices.
After opening remarks, Michel and six other panelists provided comments on their priorities.
Robert Budens, president of the Patent Office Professional Association examiners' union, echoed three prior speakers with the mantra of the summit: “Quality is a shared responsibility.” But also like everyone on the panel, Budens was unable to put a definition to “quality” that would inform the metrics by which examiners are judged.
Nevertheless, Manny Schecter, chief patent counsel for IBM Corp., said it should be a goal of the session “to look for indicia that the applicant and the examiner worked together to facilitate robust patent examination.”
The panelists generally stayed away from the six specific proposals with one exception—the record clarity proposal. “Ambiguity is the fuel for disputes,” Schecter said. “If we can build the record during prosecution, we will minimize the disputes.”
Litigator Hilda Galvan of Jones Day, Houston, seconded that thought, from the perspective of counsel in the midst of an infringement case. “The more clear the record, the easier it is for the court to properly construe the claims and for the jury to apply that construction to the accused product,” she said.
Dennis Crouch, operator of the Patently-O blog, agreed about record clarity, but put litigation issues to the side, because few patents, of the 3 million in force now, are the subject of litigation. Record clarity is for the purpose of notice to the public of the scope of the patent, he said, which can lead to large-scale economic activity that never sees a court.
And, he said that the record enhancement should be done “with a focus on claim construction.”
Judge Michel agreed, but stressed that claim construction, in particular, puts the examiner in the position of “making a legal judgment based on technological documents.” And with the further concern over ambiguity invoking indefiniteness considerations under 35 U.S.C. §112, he suggested that examiners might need more legal training to be able to make the kinds of calls that quality improvement would demand.
“Examiners have enormous power,” he said, “the power to say no. They should use that power to limit scope.”
And that calls for making demands of the applicant, Michel said. “If a term is unclear, ask the applicant to explain it. If the applicant doesn't respond, say, ‘I'm going to interpret it to mean so-and-so, and then move on.” He further said the examiner should require, if it's not clear, that the applicant identify the feature or combination of features that show the novelty of what the applicant is claiming, and take the same approach.
“Examiners could do better job in making demands and enforcing them,” he said. And if they need to “learn techniques that work” in getting responses from the applicants, that should be a part of their training.
But whether applicants' attorneys and agents will cooperate is another matter.
“I'm a zealous advocate [for my patent applicant clients], so I try to get the broadest claims under the rules,” practitioner Chris Bullard said at first.
Roy Waldron of Pfizer Inc. expressed the same view generally. “If our competitors are getting [broad] claims, my management says, ‘Why aren't we?' ” he said. “That's an incentive to push the edge. It's hard to say ‘I'm going to be the virtuous one,' particularly when there's a war going on with our competition.”
On the other hand, Bullard said that the results of the America Invents Act proceedings at the Patent Trial and Appeal Board—largely favoring challengers to patents—are beginning to change his view: “Do you do your clients a good service by getting the broadest claims? Or by getting the strongest patent that can withstand challenges?”
Nevertheless, in the later audience question section, he recast the PTAB as a backstop, rather than forcing changes during initial examination. “If the arms race of overly broad claims escalates, the PTAB provides a check, a signal,” he said. He thus cautioned against “putting too much pressure on examination in the first place that what comes out is perfect.”
To contact the reporter on this story: Tony Dutra in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Tom P. Taylor at email@example.com
Summit details at http://www.uspto.gov/patent/initiatives/patent-quality-summit.
Federal Register notice at http://pub.bna.com/ptcj/80FR6475Feb5.pdf.
Michel is a member of this journal's advisory board.
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