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by Michelle Lee
I’m pleased to report that we have completed the Clarity of the Record Pilot launched earlier this year as part of our Enhanced Patent Quality Initiative. We’ve achieved our goal of identifying some best practices for enhancing the clarity of various aspects of the prosecution record. These include best practices for documenting the USPTO’s positions with respect to claim interpretation, reasons for allowance, and interview summaries as well as encouraging examiners to initiate pre-search interviews when needed to gain a better understanding of the claimed invention. I would like to fill you in on some of our findings, and also encourage you to attend our day-long patent quality conference on December 13, where we will report in detail on the progress of the dozen or so programs in the Enhanced Patent Quality Initiative.
Through this pilot, we identified the following best practices as key drivers for clarity and trained our examiners on these practices:
For interview summaries, providing:
- the substance of the examiner’s position
- details of any agreement reached
- a description of the next steps that will follow the interview
For reasons for allowance:
- addressing each independent claim separately
- particularly identifying the applicant’s persuasive arguments (wherever they may be in the record)
- identifying allowable subject matter of the claim rather than merely reciting the entire claim as the basis for allowance
For claim interpretation:
- putting all 35 USC 112(f) presumptions on the record
- explaining how the presumptions were overcome
- identifying on the record the structure in the specification that performs the function
- when a prior reference is used to reject multiple claims, clearly addressing specific limitations in each claim that is anticipated by the art
As a result of this pilot, we found there is progress to be made in the treatment of 35 USC 112(f) limitations, interview summaries, and reasons for allowance, while our highest clarity was in the area of 35 USC 102 and 103 rejections. Going forward, we plan to continue increasing clarity in all aspects of our practice.
Overall, we measured 68 unique data points, each data point representing a different best practice for achieving clarity. We found that on average, pilot examiners used 14% more of these best practices in pilot cases as compared to control cases, and this increased use of best practices contributed to an increase in overall clarity in pilot cases. Notably, we found that in pilot cases examiners employed:
- 38% more best practices as compared to control cases for 35 USC 102 rejections and
- 140% more best practices as compared to control cases for assessments of 35 USC 112(f) limitations.
Also, we found that pilot participants carried on using the best practices they learned in the pilot, even to applications not in the pilot program. This is a strong indication that the examiners embraced the training. We also had anecdotal evidence that pilot participants encouraged fellow, non-pilot examiners to use the best practices during the prosecution of their own cases. Clearly the pilot participants saw a value to using these best practices when examining applications.
The Clarity of the Record Pilot ran from March 6 to August 20 of this year. To ensure a diverse pool of examiners, we invited randomly selected utility patent examiners with at least two years of patent examining experience to participate. All told, 125 examiners representing all utility technology centers participated, and roughly two-thirds of these participants were primary examiners.
The pilot kicked off with initial training in the form of four different modules – an initial module to provide participants with an overview of the pilot and three modules to provide identified best practices to enhance clarity with respect to the pilot’s three focus areas – claim interpretation, reasons for allowance and interview summaries. All of the modules started with a discussion about the goals of the pilot and the importance of clarity of the record.
Pilot participants were expected to use identified best practices when drafting office actions for a select number of cases. In addition, throughout the pilot, participants attended meetings (called “quality enhancement meetings”) to discuss interesting takeaways with fellow pilot participants. The quality enhancement meetings were typically held with examiners working within similar technologies; however, there were also pilot-wide meetings involving invited speakers, including a judge from the Patent Trial and Appeal Board and the Commissioner for Patents, who shared their perspective on the importance of clarifying the prosecution record. Participants also met biweekly with a pilot manager to receive one-on-one training and to consult on lessons learned.
To evaluate the pilot, the Office of Patent Quality Assurance reviewed the clarity of approximately 2,600 cases for a statistical assessment of whether the best practices of the pilot improved the clarity of office actions. In addition, we analyzed feedback from the quality enhancement meetings and training sessions, including a list of best practices developed by the pilot participants. Using this information, we identified the best practices that were key drivers of overall clarity. Based on the results from the pilot program, we are analyzing the data to provide recommendations on implementation of the pilot’s best practices across the patent examining corps.