USPTO: Status of the PTO

The USPTO’s Patent Public Advisory Committee (PPAC) meets today (May 4) for its quarterly meeting.  Livestream available [LINK]

One of the interesting bits of information is presented below as part of the USPTO’s review of 10,000+ office actions.

PatentQualityThe information here is helpful, but is severely lacking because it does not separate Type 1 and Type 2 errors and does not provide prevalence data.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

34 thoughts on “USPTO: Status of the PTO

  1. I understand that the PTO imposed 101 and 112 application examination requirements w/o any increase in examiner time to do so, so it is not surprising that some examiners may be cutting back on effective prior art searches and prior art rejections to sustain their PTO-measured productivity levels.

    1. Do you have to give more time to do something that [the examiner] was already supposed to be doing?

      Also, are you not mistakenly relying over-much on a metric as opposed to doing the actual job?

      Applicants simply do not pay for “X” hours of examination, and treating this like some zero-sum game is simple error.

      1. Remember, folks: “anon” wants you to believe that “patent quality” is very, very, very important to him.

        But he gets very very upset when anyone suggests that Examiners might need more time to do everything correctly, particularly when the PTO is still coming up to speed with the requirements of the law.

        Go figure.

        1. There is nothing amiss (Go figure…?) with my comment and my aim for better examination.

          Just because I don’t buy into the “gee my metrics should be the problem of the applicant,” does NOT mean what you are trying to portray it to mean.

          That’s called dissembling, by the way.

          Maybe you should pay better attention.

          1. A fundamental aspect of the economics of every thing is that incentives matter (and in a lot of circumstances, they are all that matters).

            Examiners are being paid to fulfill their quotas and meet their incentives. Any examination of applications along the way is quite incidental. If we want to change the way applications are examined, we must change the incentives.

            1. You have no argument from me as to the merits of what you say here, Squirrel.

              But that is just not the job of me or my client.

              Our deal is with the patent office and that deal is a straight exchange of a full and proper examination under the law for the fees provided.

              The plain fact of the matter is that applicants do NOT pay for partial examination or examination only to some internal metric of a specific amount of time so that any particular examiner can meet their own internalmetrics.

              Quite frankly, there is nothin stopping the Office (or more correctly, Congress) from changing the existing system to be some type of “pay for time” system – but that is not the deal in place.

              Making an internal problem to be a problem for me and my clients is neither fair, nor appreciated – and most definitely has nothing at all to do with the notion of examiners DOING their jobs (and not just doing what the metrics of their jobs dictate).

              1. See, this is where the disconnect is. Your clients pay the Patent Office to examine applications. The Patent Office pays the examiners to fulfill their quotas and meet their incentives.

                There is no intrinsic moral obligation for the examiners to examine the applications more than their metrics dictate they must. What your clients pay for really isn’t any concern to the examiner. It is, quite frankly, irrelevant.

                To the extent that the metrics and quotas fail to deliver what your client expects in the examination experience, it is a design failure of the Patent Office to properly create the metrics and quotas that will cause the examiners to provide the examination you are looking for.

                1. The “filter” needs to go, people…

                  Squirrel,

                  You are trying to place the “moral obligation” on the wrong party.

                  It is neither the duty nor responsibility of designing or controlling the inner working of the USPTO OR managing whatever system has been designed that come to roost on the doorstep of either me or my clients.

                  The Examiners ARE tasked with examining under the law. You are confusing the chosen metrics of what they are tasked to do with what they are tasked to do.

                  The disconnect is yours, not mine.

                2. I think we substantially agree. I don’t think the burden rests on your clients either. However, to improve the defects in the system, we must recognize the problem. If we don’t advocate for a functioning Patent Office, who will?

                  Do the examiners have a legal obligation? Do they take an oath of office (I genuinely do not know)? I mean, what is the remedy for an examiner not giving a good examination? Surely, at worst, they can be fired (hah!).

                3. I think we agree to a point, although I sense that the remaining point that we disagree about is not a trivial matter.

                  There remains a very real difference between what the job is and what the metrics for that job are.

                  I do not deny the human nature aspect of Examiners not giving a flip about the actual job with an overt focus on the metrics of the job.

                  But every time someone (anyone) takes a paycheck for a job when they know that they are not doing the job, but instead are merely padding the metrics – especially at the expense of the actual job – the moral lapse is within that person (and certainly not as your earlier posts would indicate). And also certainly not how Malcolm tries to spin it as somehow that I don’t care about the quality of examination.

                  It only compounds the problem – and greatly so – to try to force the resolution of the problem on me and my clients.

                  I simply do not take that kind of slough lightly.

                4. “I do not deny the human nature aspect of Examiners not giving a flip about the actual job with an overt focus on the metrics of the job.”

                  Meh, “the metrics” (aka the PAP criteria) are legally “the actual job”. By lawl. And also by law.

                  “but instead are merely padding the metrics”

                  Not technically supposed to be possible in the PAP.

                  “And also certainly not how Malcolm tries to spin it as somehow that I don’t care about the quality of examination.”

                  He just likes to tell you to “speak boy, speak!”. And then occasionally he throws you a “treat” of ad hominem for speaking.

                5. No 6, the metrics of the job are NOT the job (legally or otherwise).

                  And in case you didn’t notice, I provide substantive discussion points aplenty quite apart from any of the stick-in-the-eye that I deliver to Malcolm.

                  You attempt at control through spin is rather lame.

                6. Your attempt to control through shaming and name calling fares enough worse.

                  Try something on point.

            2. Indeed, and that also applies to companies obtaining patents as cheaply as possible and without any serious quality checks [until they try to enforce them].

              1. Of course, as you know from your application days, attorneys will achieve informed consent from clients as to the types of activities and level of effort to be put into the application writing process and it is – and ever remains – the clients’ prerogative as to how to proceed with that informed consent knowledge.

                Of course, I may be presuming that in your prosecution days that you did advise the clients of such things.

                Further – and to distinguish the context of your reply to the item being replied to, the availability of choice in the free market that is afforded to clients as they make their own decisions and the level of non-choice that government employees (such as Examiners) have in the matter.

  2. The March 2nd PPAC transcript finally has some results on the 101-compact prosecution case study.

    From a sample of 1.5e5 non-final office actions with SME (subject matter eligibility) rejections, the office found 721 applications which were sent a non-final OA with a SME rejection and without a prior art rejection, which were subsequently sent a non-final WITH a prior art rejection. Of those, they determined that in 361 of the applications, the prior art rejection could have been provided earlier. These cases are blatently violating compact prosecution by sending out 101-only-OAs.

    Their constructed metric is far from comprehensive as it leaves out any case where a PA rejection is added during final or where a PA rejection is wrongly never provided.

    But at the same time, it seems likely that the metric would correlate with less blatent 101-only-OAs.

    So the preliminary results appear to be somewhere in the range from inconclusive to weakly supporting a conclusion that there is NOT wide spread abuse of 101-only-OAs.

    1. Compliance factors will follow the Supreme Court examples and you will only be informed of the meaning when “they see it.”

      😉

      1. Hmmm, once again it seems a choice between:

        1. Compliance and obedience by the people with the edicts of the State.

        or

        2. Compliance by the government with its proper role to serve the people by protecting individual rights.

        “another” possibility is:

        3. Compliance by government with arbitrary rules purported to be in the interests of the so called public welfare, which actually entails and requires in some form, 1 above.

          1. Yay! The “very serious” poker tell from Malcolm that he has zero meaningful additions to make to the dialogue, but nonetheless is overcome with his addiction to snark and venom for anything that may appear to be “Pro-patent.”

            Asking nicely (yet again), Malcolm, please get into a line of work in which you can believe in the end product produced. The cognitive dissonance is plainly evident and everyone would be much happier if you followed a different calling.

    2. It is meaningless. It is the percentage of the time a reviewer agrees with the patentability determination of the examiner. The presenter admitted that there was no correlation with actual PTAB decisions. So 89-99% of the time the senior examiner agrees with the junior examiner. The only statistic that matters is what percentage of issued patents are defect free. If PTAB is the measuring stick (a big IF), then it is around 50%.

      1. Actually Mr. Invention Rights, it’s not “89-99% of the time the senior examiner agrees with the junior examiner.” It’s really that 89-99% of the time some random reviewer in the OPQA office found there wasn’t a “clear” error with the determination of the examiner(s), i.e. each application is examined by either a primary examiner alone or a junior examiner who then sends the office action to a primary examiner or a SPE to be signed. Only a random small percentage of office actions are then pulled to be looked at by a reviewer in OPQA.

        1. The_Truth,

          You appear to be speaking from an “insider’s” point of view (I would say “knowledge,” but that might give the wrong impression).

          Seeing as the rules of 37 C.F.R. § 1.2 are binding on ALL office personnel, are the “transactions” you speak of – seeing as they are NOT part of the written record, carried out in violation of the binding Rules?

          That section states in pertinent part:

          Business to be transacted in writing.

          The action of the Patent and Trademark Office will be based exclusively on the written record in the Office.

          Secondarily, if this “written record” is somehow “magically” kept out of the public’ view (and out of the view of the applicant, which raises some serious Due Process issues), would the Patent Office need to surrender the records to any Freedom of Information Act request?

          1. I would add that as much as the SAWS program was a debacle for the Office, this is something that should not stay in the shadows of the “politically compromised” executive agency.

          2. Anon, these decisions on “non compliance”, i.e. errors, that you see in the graph are handed down from OPQA after the fact so the action(s) taken by the examiner is based exclusively on the written record in the Office. I’m not sure how 37 CFR 1.2 would come into play. Technically the error isn’t even charged against the examiner, it’s against the technical center (TC) and the examiner’s supervisor. However, as the saying goes “stuff” rolls down hill. So for example, if reviewers in OPQA decide something is an abstract idea, then the TC and SPEs start being charged with 101 errors, and the SPEs start charging examiners with 101 errors, and then the examiners start issuing more 101 rejections in that area.

            As for a FOIA request, I suspect the office would assert the 5 U.S.C. § 552(b)(2) exemption.

            1. You cannot have it both ways – it affects the prosecution (and thus is illegally withheld), or it does not affect, thus the claim to the exception to turn over is improper.

              Point blank: this is nothing more than the same type of black eye star chamber embarrassment that SAWS was.

              There is zero legitimate reason why this is not out in the sunshine.

        2. The major defect with OPQA is that they never do prior art searches to see what examiners are missing, even though that should be at the top of quality considerations.

          1. As much as I would agree that such is “a” major defect, I would not classify that as “the” major defect.

            The aforementioned defect of not complying with 37 C.F.R. § 1.2 is easily a far more serious defect.

          2. Paul, I’ve actually seen an OPQA error where they did search and said a piece of prior art read on the claim, so I know they do search in at least some cases.

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