As part of its patent quality initiative, the USPTO has offered six proposals for comment and discussion. These will serve as focal-points for the March 25-26 Patent Quality Summit hosted at the USPTO’s Arlington HQ. I will be participating in the Summit that looks to offer a highly-interactive experience where all attendees will have the opportunity to be heard. Via its Federal Register notice, the USPTO is also seeking written comments on the proposals.
- Proposal 1 – Requests for Quality Review: The USPTO proposes that applicants be permitted to request quality review by the OPQA (Office of Patent Quality Assurance) for particular applications. Thus, an applicant who receives a very low quality office action would be able to seek review in this more informal manner without appeal or RCE.
- Proposal 2 – Automated Pre-Examination Search: The USPTO is looking for new tools that would cheaply provide the examiner with a set of starting-points for the examination process. One idea is to automate a pre-examination search. A better approach – in my view – is that the USPTO examiners should rely first on the submitted prior art references as guiding their search — those submitted references will be a better guide to the closest prior art than any automated search. To accomplish this, the USPTO will need to develop IT tools that better allow for internal searching of these submitted documents (including non-patent prior art).
- Proposal 3 – Clarity of Record: The USPTO is looking for input on ways to “enhance the clarity and completeness” of the prosecution record. For me, there should be an increased amount of information from the prosecution record that is available in machine-readable form [i.e., xml]. In many ways, issued patents are still designed around the notion that they are paper documents that can be converted into a machine-readable-form. However, the reality is that patents today are born-digital and with several hundred thousand new patents issuing each year, these patents should be better designed and configured in a way to facilitate automated machine access (rather than PAIR image files). This includes very simple information such as patent expiry date; whether the patent is a post-AIA patent; the patent’s effective filing date and original priority document; reasons for allowance; and a summary of rejections made during prosecution. More detailed information would include the prosecution history documents created in machine-readable form.
- Proposal 4 – Review of and Improvements to Quality Metrics: A major question is the meaning of a “quality patent” and then – how to measure that quality in order to judge both the system and USPTO examiner performance.
- Proposal 5 – Review of Current Compact Prosecution Model and the Effect on Quality: The USPTO is considering the current “compact prosecution model” and is particularly concerned that so many cases result in either an RCE (Request for Continued Examination) or appeal to the PTAB (Patent Trial and Appeal Board). Are the better mechanisms to more quickly and easily get to a resolution of a valid patent being issued or – if not – the application being abandoned.
- Proposal 6: In-Person Interview Capability with All Examiners – The USPTO is considering expanding the locations for conducting in-person interviews – is this a good idea and how might it work?