Patent Quality Plans and Submissions

Earlier this week I wrote about the upcoming deadline for comments on the USPTO’s patent quality initiative as well as the Berkeley Technology Law Journal’s parallel publication process.  Although the BTLJ’s project is not sanctioned by the PTO, we are working to coordinate our efforts in order to help the PTO evaluate the proposals and suggestions. Along that line, I wanted folks to be aware that, although the BTLJ will not publish all submissions, all submissions will be provided to the USPTO for their consideration.  (Thus, by submitting to BTLJ, you can’t expect that your work will remain confidential).  I believe that the PTO will add all these suggestions to its online docket of comments.

More Info: BTLJ/USPTO Quality Initiative

10 thoughts on “Patent Quality Plans and Submissions

  1. 3

    Why not allow the public to comment on issued patents via a monitored “blog.” If the public provided comments, those comments could be flagged to the concerned examiners and their bosses.

    The boss will know whether the complaints or praises have merit. He should have the discretion to adjust bonus money up or down as appropriate.

  2. 1

    Yes, because the best way to fix the system is consider only one side of the equation and ask them question that boil down to: “Do you think quality would be enhanced by having being able to request “quality” examination of your case instead of appealing?”

    Here’s a better question: Do you think quality would be enhanced by the PTO rewarding outside stakeholders (by extending patent terms or something) for submission of briefs detailing potential rejections of cases before an Examiner if the Examiner accepts said brief?

    Then you’d get all the outside stakeholder’s scrambling to reject other stakeholders applications for their own benefit. The best way to solve this problem is to leverage the one thing that has contributed more to the current situation than anything else: greed

    1. 1.1

      Patent examination is ex parte.

      Any inter partes dispute is much more complex and time-consuming to adjudicate – which is why it’s:

      (a) reserved for the PTAB and courts, where a judge – or a panel of judges, with an administrative staff – rather than a GS-09 patent examiner; and

      (b) uber-spendy: an IPR hearing costs $23,000 in PTO fees, not including fees for experienced (read: expensive) counsel to argue it for you.

      So let’s say we allow third parties to step into prosecution. Consider:

      Parties A and B are pursuing competing patents in a valuable space. Party A is a large entity with a huge war chest; party B is a startup on a budget. Party A can pay to jump into party B’s case and throw in the kitchen sink, in the form of briefs and extensive searches for prior art. Party B can neither afford to jump into Party A’s case like this, or even afford counsel to defend its own application in response to Party A’s attack.

      In short – your suggestion allows well-funded companies to squeeze less-well-funded companies out of patent protection, simply by taking advantage of cost inequities.

      Our patent system is already rife with cost inequities, but they are largely confined to post-grant (i.e.: it’s reasonably affordable to file, prosecute, and receive an issue notification for an idea; but from the moment the patent issues, it becomes much more expensive to maintain, and vastly more expensive to use offensively). What is the advantage of further tilting the system to benefit well-funded applicants?

      1. 1.1.2

        I respectfully disagree.

        The AIA already allows a form of this by allowing 3rd party submissions. It’s already had basically three years for this to kick in, but it hasn’t. While your consideration is valid, I believe the point of Anon2.0 is to promulgate some type of system that facilitates global participation in the examination process instead of simply complaining about it.

        As for anon, yes, it is our job to examine, but sometimes it’s good to have a little help.

        1. 1.1.2.1

          The AIA already allows a form of this by allowing 3rd party submissions.

          I’ve been hearing about third-party submissions since long before the AIA – the USPTO’s first effort was in 2007, and BountyQuest dates back to 2000.

          Third-party submissions are fine. Where things get difficult is third-party submissions of arguments about the references – brief about why inventions shouldn’t be patentable, or how references apply to the case. Can the third parties submit evidence? Test results? Expert witness testimony? Can the third parties speak with the examiner? Does the applicant get to respond to the brief before the examiner makes any decisions? Are there oral arguments? Does the third party have any burden of proof to satisfy before? Is there a written transcript of the exchange?… etc.

          All of these questions have definite answers in the context of a PTAB appeal. But asking the examiner to turn the office into a courtroom is a non-starter.

          1. 1.1.2.1.1

            Hypo: stipulating that per se software is ineligible at midnight, how much of a quality problem is left? How often are profoundly invalid patents issued in non computer art units?

            1. 1.1.2.1.1.1

              Well, since ladders of abstraction are used in 95% of any claims that have any value, and language that sounds in function is used across the board, it comes down to your (rather strawman) definition of “profoundly invalid”

              And that’s even putting aside for the moment that fact that you have no legal basis for your “stipulation.”

              What means do you wish to present to arrive at the ends of your Hypo?

              The means really do matter, after all.
              Even in repressive regimes
              ;-)

        2. 1.1.2.2

          That’s not “help” without strings – and an important point, that only the already well established Big Corp is likely to give.

          Don’t be so Pollyanna.

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