United States: USPTO Seeks Input On Patent Quality

As announced in a February 5, 2015 Federal Register Notice, the USPTO is launching an enhanced quality initiative that includes a request for public comment on certain proposals and a two-day "Quality Summit" to be held March 25-26, 2015, at the USPTO's Alexandria, Virginia campus. The overall goal of the USPTO is "to ensure the issuance of the best quality patents and provide the best customer service possible."

Patent Quality Pillars

The quality initiative is focused on what the USPTO is identifying as the three patent quality pillars:

  1. Excellence in work product (issued patents and Office actions)
    "The USPTO is committed to issuing patents that clearly define the scope of the rights therein, that are within the bounds of the patent statutes as interpreted by the judiciary, and that provide certainty as to their validity to encourage investment in research, development, and commercialization."
  2. Excellence in measuring patent quality (appropriate quality metrics)
    "[T]he USPTO is focusing on its measurement of quality to evaluate work products and customer interactions. The USPTO welcomes the public's input on its measurement of patent quality and how it may be improved."
  3. Excellence in customer service
    "The USPTO seeks feedback to ensure that customers are treated promptly, fairly, consistently, and professionally at all stages of the examination process."

Current Patent Quality Initiatives

The Federal Register Notice highlights a number of patent quality initiatives already underway, including examiner training on functional claiming, the glossary initiative, and the After Final Consideration Pilot Program.

The Federal Register Notice provides direct links to USPTO website pages for each program. When I tried to find them on my own, I finally found them by going to uspto.gov > patents and then scrolling down to the bottom of the page, where there was a link for "initiatives":

Is anyone else completely lost on the new USPTO website?

Proposed New Patent Quality Initiatives

The Federal Register Notice outlines six new patent quality initiatives to serve as "conversation" starters.

1. Applicant Requests for Prosecution Review of Selected Applications
An applicant would be able to request review of an application by the Office of Patent Quality Assurance (OPQA), "where the applicant believes that the application contains an issue that would benefit from further review." .... "Through this process, the applicant would be able to bring issues to the attention of OPQA so that the Office can analyze the data from the reviews to identify trends and challenges to better inform future training and improvements to examination process."
It's not clear from this summary whether the applicant would benefit from this review (e.g., whether OPQA could influence the course of prosecution). If not, applicants may not want to flag their applications as potential problem cases.

2. Automated Pre-Examination Search
"[T]he USPTO is seeking input on new tools" for conducting automated pre-examination searches, with more complex functionality than its current PLUS tool.

3. Clarity of the Record
Building on the functional claiming initiative, the USPTO is exploring other options for improving the clarity of the record, such as making claim construction explicit in the record, providing more detail on interviews, pre-appeal conference decisions, and appeal conferences, and providing more detailed statements of reasons for allowance.

4. Review of and Improvements to quality metrics
The USPTO is re-assessing the effectiveness of its Quality Composite Metric, which is explained here.

5. Review of Current Compact Prosecution Model and the Effect on Quality
The USPTO is interested in "proactive alternatives to Request for Continued Examination filings or appeals to the Patent Trial and Appeal Board" to advance prosecution. One particular proposal would permit an applicant to "pay for entry of an additional response ... before a final rejection is issued, thereby providing for at least two non-final Office actions in an application."
Please see this article on Compact Prosecution 2.0 for more information on one such paradigm.

6. In-Person Interview Capability with All Examiners
The USPTO is considering how to "ensure the availability of in-person interviews for all applications," such as by permitting interviews to be held at regional libraries near the duty stations of hoteling examiners.

What Do You Think?

To provide your input on these patent quality initiatives, you can send written comments by email to WorldClassPatentQuality@uspto.gov or by mail to:

Mail Stop Comments–Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450

Attention: Michael Cygan, Senior Legal Advisor, Office of Patent Legal Administration
Office of the Deputy Commissioner for Patent Examination Policy

If you plan to attend the Quality Summit, the USPTO asks that you RSVP by email to WorldClassPatentQuality@uspto.gov by March 18, 2015.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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