Patent Law

Gin Rummy

By Gary Odom and Jordan Kuhn

The U.S. Chamber of Commerce shows it knows how to stew analytic gumbo - its recommendations for the USPTO seamlessly blend fact and fiction.

Too many junk patents are slipping through the rejection machine, the report cries. An old saw that doesn't play now.

Despite the best efforts of the PTO's patent examination and support staffs, prevailing perceptions within the patent community are that the quality of patents issued is declining at a precipitous rate. Rigorous patentability standards must be met if confidence in the validity of U.S. patents is to be restored.

The report is premised upon the fiction that examiners can't find prior art, and so suggests better search tools and expanding the peer-to-patent pilot program, which has actually shown to be not worth the effort.

There is a lot of irrelevancy in this off-point report.

The PTO should increase opportunities and incentives for patent examiners to become lawyers.

That would certainly accelerate attrition for the more experienced examiners.

The PTO should work with the patent users to jointly develop models for the attributes of drafting high-quality patent applications that meet statutory patentability criteria (35 U.S.C §§ 101 and 112, first and second paragraphs especially).

Gee, how about a process called examination? Even better for spreading the gospel, and not suggested in the report: the PTO ought to have a weblog.

The PTO should work with the user community to create a new quality metric that better reflects the overall quality of U.S. patents.

How about sticking to core competence and timely grant meritorious patents? Metrics turn into a numbers game that often turns ugly. Like allowance rate.

The report rightly mentions the exuberant restriction practice, but that's just a symptom of bad management encouraging examiner sloth, a short-term fix piling up a long-term problem.

In hashing the production system, the report writers waffle, but maintain production goals are essential.

The PTO did an experiment allowing a group of examiners to work for a period of time without a goal. The finding was that these examiners did less than the necessary amount of work. The examiners in the study themselves indicated that they required a goal to understand how much work was to be completed. Because of the large number of applications and backlogs in the PTO, a production system is essential to the efficient completion of applications and to maintaining or reducing patent pendency levels.

Not so. Grind-it-out production goals, flat or otherwise, are the wrong approach, as former Commissioner Casper Ooms knew. Patent examination doesn't have a postal equivalence. One constructive suggestion, not made in the report, is to grade applications by complexity, and assign production goals based upon complexity. But good management leads to good supervision, and that's all that's really needed. So much of what is wrong with PTO examination now is wasted effort, not insufficient effort.

The PTO should ensure that claims are adequately supported by their corresponding specification.

A decent hint. The concrete suggestion would be to require applicants to map claim limitations to specification support. Likely a howler to prosecutors, but could improve claims and examination in many instances.

The report suggests "increasing user fees." The patent office has enough money. The problem is singular: stark-raving management incompetence.

The report does come to "appoint a well-qualified undersecretary and director." Amen.

The report raises genuine issues, and is worth review, but reads like as often as not like blind pigs seeking acorns.

Full post as published by The Patent Prospector on December 25, 2008 (boomark / email).