United States: U.S. Government Accountability Office Releases Two Reports On The United States Patent And Trademark Office And A Survey Of USPTO Examiners

The significant growth of patent litigation over the last seven years and the increasing number of patents found to be invalid by court or the Patent Trial and Appeal Board has led Congress to consider how to ensure newly granted patents are strong. Rep. Bob Goodlatte (R-Va.) in his role as House Judiciary Committee Chairman, asked the Government Accountability Office to study the issue and provide recommendations. The GAO responded on July 20, 2016 with the release of two reports on patent quality at the United States Patent and Trademark Office and the results of a survey of over 2,600 USPTO examiners. Regarding the reports, Rep. Goodlatte stated, "The strength of the U.S. system relies on the granting of strong patents, ones that are truly novel and nonobvious inventions, those that are true innovations and not the product of legal gamesmanship."

The first report focused directly on patent quality and examined recent trends in patent litigation. After analyzing current laws and patent litigation data from 2007 to 2015, surveying a sample of patent examiners, and interviewing USPTO officials as well as stakeholders, the GAO made a number of recommendations for the USPTO. As summarized in the report, they include: (1) more consistently defining patent quality and articulating that definition in agency documents and guidance; (2) reassessing the time allotted for examination; (3) using data from PTAB proceedings to improve patent quality; and (4) considering requiring applicants to use additional clarity tools.

The USPTO has no consistent definition of patent quality; stakeholders interviewed by the GAO for the report stated they would define a quality patent as one that would meet the statutory requirements for novelty and clarity, and would be upheld if challenged in a lawsuit or other proceeding. The USPTO has not assessed the effect of the time allotted for patent examination, or the effect of monetary incentives for examiners on patent quality. As the report notes, examiners are rewarded for timeliness and quantity, but are not eligible for bonuses related to patent quality. Approximately 70 percent of examiners believe that with their current workload, they do not have sufficient time to complete a thorough examination. For example, the USPTO "compact prosecution" policy encourages examiners to complete an examination within two office actions and to address all statutory issues of an application in the first office action. As a result, examiners need to guess what unclear claims mean in order to complete a prior art search. Another factor affecting quality of examination is allowing applications with unlimited claims. Not only do numerous claims make it more difficult for the examiner to fully examine the application, but a 2015 study by the USPTO showed that patents with many claims are more likely to be asserted in infringement lawsuits.

The GAO also found that another factor affecting patent quality is the use of very broadly worded patent applications, which nearly two-thirds of patent examiners said increased the difficulty of completing a thorough examination. To address that issue, the GAO recommended additional tools, such as a glossary of key terms. Other tools, such as check boxes to signal functional claiming language and claim charts, would make it easier for examiners to do an effective examination.

The GAO's second report sought to identify ways to improve patent quality through use of the best available prior art. The GAO considered the challenges that examiners face in identifying relevant prior art, looked at how selected foreign patent offices have addressed challenges in identifying relevant prior art, and assessed the extent to which the USPTO has taken steps to address challenges in identifying relevant prior art. The GAO again surveyed patent examiners and interviewed USPTO officials as well as patent holders, attorneys, academics, and other stakeholders. As summarized in the report, the GAO's recommendations include that the USPTO: (1) Develop a strategy to identify key sources of nonpatent literature; (2) Establish goals and indicators for prior art search quality; and (3) Collect sufficient information to assess prior art search quality.

While the USPTO is currently in the process of upgrading its search tools, examiners must access a variety of external sources to meet the USPTO's requirement to consider nonpatent literature. The European Patent Office and the Japanese Patent Office have already included nonpatent literature in their in-house search tools, which results in more efficient searches. However, because the USPTO does not have a documented strategy for identifying additional sources, the GAO concluded that it did not make financial sense to invest in expanding its search tools without a documented strategy in place.

The GAO also found that examiners' prior art search results are not consistently evaluated, in part because the USPTO has not established goals or indicators for search quality. The average time for a prior art search can differ significantly across technology centers. Without goals or indicators for search quality, it is not possible to understand whether those discrepancies are reasonable. According to the report, written guidance for each technology center about what constitutes a quality search would improve consistency and ensure thorough searches. Further, the USPTO may not be collecting sufficient information on the searches to properly assess quality, including the amount of time an examiner needs to search and document the sources considered, including U.S. patents, foreign patents, and nonpatent literature.

The USPTO has provided its initial responses to each of the recommendations and will continue to analyze them. When Congress reconvenes in the fall, the House Judiciary Committee will likely hold hearings with USPTO representatives to consider what steps to take moving forward. While a number of the recommendations would likely require an additional investment in resources, others can be implemented without great cost. Practitioners, including patent prosecutors and patent litigators, will no doubt debate the effectiveness of these recommendations in the coming months. In the meantime, the GAO's survey of patent examiners provides a rich trove of data for practitioners to better understand the inner workings of the USPTO.

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