By Donald Zuhn--
In a notice published in the Federal Register last month (80 Fed. Reg. 6475), the U.S. Patent and Trademark Office announced that it is launching a comprehensive and enhanced patent quality initiative. As part of this initiative, the Office is requesting comments from the public to direct the Office's efforts towards enhancing patent quality. The notice indicates that such efforts are aimed at improving patent operations and procedures, enhancing the customer experience, and improving existing quality metrics.
The notice on the new initiative explains that the Office is launching:
[A] new, wide-ranging initiative to enhance the quality of patents issued by the USPTO. High quality patents permit certainty and clarity of rights, which in turn fuels innovation and reduces needless litigation. Moreover and importantly, for the first time in recent history, the USPTO has the financial resources to consider longer-term and more expensive improvements to patent quality by leveraging the sustainable funding model provided by the fee setting provisions in the America Invents Act. The USPTO also has made steady progress in reducing both the backlog of unexamined patent application and patent pendency. The current backlog of unexamined patent applications has dropped from a high of more than 764,000 in January 2009 to presently less than 605,000. Similarly, the pendency from filing to a disposition has dropped from a high of 34.5 months in August 2010 to currently 27.1 months. While the agency still has progress to make in further reducing both the backlog and pendency, the confluence of these events make it the optimal time for the USPTO to pursue this enhanced quality initiative.
The notice also explains that the initiative is targeting three aspects of patent quality, which the Office refers to as "patent quality pillars." These pillars include: (1) excellence in work products (i.e., issued patents and Office actions), (2) excellence in measuring patent quality, and (3) excellence in customer service.
With respect to the Office's request for public comments, the notice states that the Office welcomes feedback regarding the following questions:
• Are there aspects of enhanced quality other than the three "pillars" that should guide the Office's enhanced quality initiative?
• Are there any new or necessary changes to existing procedures that the Office should consider to improve the efficiency and effectiveness of the examination process?
• What should be included at the time of application filing in order to enhance patent quality?
The notice also contains a discussion of eleven examples of the Office's ongoing efforts to improve the quality of issued patents:
(1) Providing more robust training to examiners (e.g., Patent Examiner Technical Training Program, training on Cooperative Patent Classification (CPC) system);
(2) Developing training modules on claim clarity and functional claiming and providing legal training on the new provisions of the America Invents Acts and on subject matter eligibility in view of recent judicial rulings;
(3) Launching the voluntary glossary pilot program;
(4) Engaging in pilot programs (e.g., Quick Path IDS Program (QPIDS) and After Final Consideration Pilot (AFCP));
(5) Implementing programs to take advantage of the search and examination work done in corresponding applications filed in other intellectual property offices (e.g., Patent Prosecution Highway (PPH) program and Common Citation Document program (CCD));
(6) Actively promoting interviews between applicants and examiners throughout prosecution (e.g., First Action Interview Pilot Program);
(7) Expanding assistance to independent inventors (e.g., educational programs hosted by the Office of the Innovation Development and through the Pro Se Pilot Examination Unit);
(8) Providing numerous call centers (e.g., Inventors Assistance Center, Application Assistance Unit; America Invents Act (AIA) Contact Center and HELP–AIA hotline);
(9) Exploring the use of crowdsourcing to uncover hard-to-find prior art and improving the preissuance submissions process (including the development of an improved electronic user interface for making submissions);
(10) Measuring and reporting a Quality Composite Metric composed of seven factors: (i) the final disposition review; (ii) the in-process review; (iii) the first action on the merits (FAOM) search review; (iv) the complete FAOM review; (v) the external quality survey; (vi) the internal quality survey; and (vii) the quality index report; and
(11) Implementing the Patents End-to-End Program (PE2E) and investigating the design and implementation of an improved notification system that would provide additional prosecution-related alerts to patent applicants in real-time.
A more detailed discussion of the above efforts can be found in the notice. (In addition, many of the programs listed above have been discussed elsewhere on Patent Docs.)
The notice also describes six new quality proposals for which the Office is seeking comments:
(1) Applicant Requests for Prosecution Review of Selected Applications -- a mechanism for an applicant to request an Office of Patent Quality Assurance (OPQA) prosecution review of a particular application where the applicant believes that the application contains an issue that would benefit from such a review;
(2) Automated Pre-Examination Search -- given that computerized searching algorithms and database technologies have advanced significantly in recent years, the Office is seeking input on new tools that might be useful to conduct a pre-examination search (currently, examiners may request that the Office's Scientific and Technical Information Center (STIC) perform an automated pre-examination search using a computerized linguistic tool, called the Patent Linguistic Utility Service (PLUS));
(3) Clarity of the Record -- an identification of procedures that could be made part of standard examination practices to improve the clarity of the prosecution record, including:
• Making claim construction explicit in the record, including the scope of claim terms, claim preambles, and functionally defined clauses (e.g., wherein clauses).
• Further detail in the recordation of interviews, pre-appeal conference decisions, and appeal conferences, including identifying which arguments presented in the interview overcome individual rejections of record.
• Where a statement of the reasons for allowance is necessary, providing a more detailed summary of the reasons for allowing a claim; for example, identifying the amendment, argument, or evidence that overcomes a rejection of record, so as to clearly communicate to the public the examiner's reasons why the claimed invention is patentable;
(4) Review of and Improvements to Quality Metrics;
(5) Review of the Current Compact Prosecution Model and the Effect on Quality -- determining whether the current compact prosecution model should be modified, including, for example, "feedback on the desirability of a procedure by which an applicant might pay for entry of an additional response that may or may not require an examiner interview to further prosecution in an application before a final rejection is issued, thereby providing for at least two non-final Office actions in an application";
(6) In-Person Interview Capability With All Examiners -- conducting in-person interviews at additional locations, such as at regional libraries that have partnered with the Office to serve as repositories for patent materials (e.g., Boston Public Library, Chicago Public Library, and Los Angeles Public Library).
The notice also indicates that the initiative will include a two-day "Quality Summit" on March 25-26, 2015, to be held at the Madison Building on the Office's Alexandria, VA campus. The Summit will also be webcast (with details regarding the webcast to be provided closer to the Summit). Those interested in attending the Summit should send an e-mail to: WorldClassPatentQuality@uspto.gov by March 18, 2015. The notice provides the following agenda for the Summit (click on agenda to enlarge):
Written comments regarding the enhanced quality initiative should be sent by e-mail to: WorldClassPatentQuality@uspto.gov, or by regular mail addressed to: Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313–1450, marked to the attention of Michael Cygan, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy. In order to be ensured of consideration, written comments must be submitted by May 6, 2015. Comments will be posted on the Office's Enhanced Patent Quality Initiative website.
Patent Docs plans to provide additional coverage of certain portions of the Quality Summit.