Guest Post by Profs. Frakes and Wasserman: Irrational Ignorance at the Patent Office

By: Michael D. Frakes, Duke University School of Law and Melissa F. Wasserman, The University of Texas School of Law

The Patent Office, which processes over half-a-million patent applications a year, routinely faces budgetary shortfalls, high patent examiner turnover, and a crushing backlog of patent applications.  Given this challenging environment, it is not surprising that the patent examination process generates some degree of error, including errors that culminate in the issuance of a significant number of invalid patents.  Given that invalid patents impose substantial harms on society, the question is what should we do about them?

At first glance, the solution seems straightforward:   the Patent Office needs to do more to ensure it awards patents only to those inventions that deserve them.  A seemingly promising start is to give patent examiners more time to evaluate applications.  On average, a U.S. patent examiner spends only nineteen hours reviewing an application, including reading the application, searching for prior art, comparing the prior art with the application, writing a rejection, responding to the patent applicant’s arguments, and often conducting an interview with the applicant’s attorney.  If examiners are not given enough time to evaluate applications, they may not be able to reject applications by identifying and articulating justifications with appropriate underlying legal validity.  Offering validation for these concerns, our prior empirical work tested the extent to which patent examiner time allocations are causing examiners to grant invalid patents and found that examiners were indeed allowing patents of dubious quality because they are not given sufficient time.

Even in the face of this compelling evidence, however, it is not immediately clear that the solution to the patent quality crisis is to give patent examiners more time.  While increasing examiner time allocations will decrease the number of invalid patents issued by the Patent Office, it is possible that the Patent Office is, as Mark Lemley famously wrote, “rationally ignorant.”  That is, it may be rational for the Patent Office not to screen patent applications too rigorously because there is another institutional player that could weed out bad patents:  the courts.  More specifically, Lemley argued that because so few patents are litigated or licensed, it is better to rely upon litigation to make detailed validity determinations in those rare instances rather than increasing the resources to the Patent Office to provide more thorough review of all patent applications.  Lemley supports his thesis with a cost-benefit analysis wherein he concludes that the costs associated with doubling the Patent Office’s hours to review patent applications outweighs the benefits gained by the resulting decrease in the number of invalid patents the Patent Office would issue.  Although some of the numbers in his analysis reflect hard data, the dearth of empirical evidence available to the time forced him to make several critical assumptions, including assuming (rather than estimating) how many fewer patents the Patent Office would issue if examiner time allocations were doubled.

Although it has been over fifteen years since Professor Lemley wrote his influential and widely-cited article, the debate on how to best rid ourselves of bad patents continues to rage on.   In 2011, Congress enacted the most comprehensive reform bill to the patent system in decades, and arguably favored the ex-post approach by creating a new adjudicatory tribunal at the Patent Office wherein third parties can challenge the validity of issued patents.  In 2016, for the first time in forty years, the Patent Office began a comprehensive reevaluation of examiner time allocations, arguably favoring an ex-ante approach.

The time is ripe to revisit whether the Patent Office is, in fact, “rationally ignorant.”   Should we increase the resources at the Patent Office in an effort to increase the quality of issued patents or should we forego those marginal investments and reserve a larger residual role for the courts?  Our Article, begins to answer this question by employing new and rich sources of data along with sophisticated empirical techniques to form novel empirically driven estimates of the relationships that Lemley was forced to guess in his own analysis.

Armed with these new estimates, our Article demonstrates that the savings in future litigation costs and prosecution expenses associated with giving examiners additional time per application outweighs the costs of increasing examiner time allocations.  More specifically, we estimate that doubling examiner time allocations would cost the Patent Office approximately $660 million dollars in additional personnel expenses.  We also estimate that doubling the amount of hours allocated to review applications would result in $301 million in savings in prosecution expenses to the patent applicant driven by decreased rounds of review at the Patent Office.  Finally, we estimate federal litigation-related savings of $491 million and PTAB litigation savings of $112 million.   Though the $660 million increase in costs is significant, this amount is still exceeded by the $904 million that may be saved annually in (i) expenses covering litigation in federal court, (ii) PTAB-related legal expenses and (iii) potential savings in prosecution costs.  The efficiency gains from marginal investments at the Patent Office are even greater when considering a range of additional harms that may ensue from the issuance of invalid patents by the Agency, such as diminishing cumulative innovation, dead-weight loss, etc.  Thus, we conclude the opposite of Lemley:  society would be better off investing more resources in the Agency to improve patent quality than relying upon ex-post litigation to weed out invalid patents.  Given its current level of resources, the Patent Office is not being “rationally ignorant” but, instead, irrationally ignorant.

The current draft of our article is available on SSRN here. It’s forthcoming in the Vanderbilt Law Review in 2019, so there’s plenty of time for us to incorporate any comments you may have.

81 thoughts on “Guest Post by Profs. Frakes and Wasserman: Irrational Ignorance at the Patent Office

  1. 14

    Just expunge logic and info patents from the system where they don’t belong in the first place and 99% of the worst problems with the current system will disappear. There will be zero negative effect on “innovation” unless “innovation” means less Silly Con Valley Bros getting richer than their rich d@ddies.

    1. 14.1

      How is your copyright project on “just logic” coming along?

      Your opinions as to what belongs and what does not belong cannot be squared with the actual reality of innovation.

      Sorry if that hurts your feelings, Malcolm, but that is reality.

  2. 13

    Let’s just go back to a registration system. A one year IPR process – with one claim amendment as a matter of right. Some new type of award to the PTO employee – when an issued patent is subsequently found valid (hence a positive incentive to use the PTO expertise to issue – the most valid patents). And then off to the races in District Court between the patent owner and the infringer. IMHO, the Professors might have something more interesting to say – for example, applying game theory to create a new system vs. doubling Examiner time because of some paper Lemley did a long time ago?

    1. 13.1

      From a cross-thread: link to stemming from a tangent conversation on the myth of “wearing down” examiners,

      Two immediate thoughts, MaxDrei,

      First is that the wearing down of applicants may well happen without the “no longer worth the candle” thinking, as reality may well intrude well before the balancing of worth of candle and effort to be expended is made; as the worth of the candle, and the actual means at hand for the applicant may NOT be equivalent.

      Second, the notion of “Not so with PTO examiners” should probably be amplified (given, at least in the Sovereign of the US, that there really is NO meaningful impact back to examiners of patents and their actions post-grant. It is one of the deeper fallacies of the AIA and the “band-aid” of post grant review. As I have previously noted (from prior experience in the real world), quality is not “inspected in” with most warranty programs, and certainly not when the warranty program is disassociated with the product manufacturing process.

      I will agree with your views here that it makes sense to try to get the examination process better. There are also “points” as to the economy of not pursuing perfect examination (which is a bit more subtle than what is being discussed here). Lastly, the mention of “just use a registration system” (not by you), MAY have merit if the denigration of what “grant” means continues.

      IF “grant” has no forceful impact (as to the strong rights of the person receiving the grant),
      THEN the money spent in the process BY that person is wasted money (another type of error outside of the “patents are bad” mindset).

      Our patent office is supported ENTIRELY by the monies of innovators. That support runs to the tune of some four BILLION dollars.


      I can easily see a (much better) registration system built and maintained for a miniscule fraction of that amount. IF we wanted to take those spent funds and move that money to innovation (as opposed to the oft-decried-anyway examination), THEN a registration system is something that should be on the table.

      Of course, any “gold standard” of application development (outside of the Office) would well still apply, even as the economies of “Perfect” would ALSO apply. But such would be at the discretion of the applicant, and the Billions now spent strictly at the Office would not need be so spent.

      Additionally, since “vetting” by an examiner corp would no longer be present, I could easily see that the presence (and more particularly, the level) of the presumption of validity most likely would need to be revisited (and removed or decreased down to an “even” playing field).

      But since our Court (and courts) seem intent on ignoring that Congress-decreed level anyway, perhaps some new “reality” may be better struck with registration and saving innovators the BILLIONS in “carrying costs” for the Office.

      …and a thought not so immediate, but no less important:

      Let me stress (in relation to my first paragraph above) that for our Sovereign – and in purposeful distinction from the other patent systems of the day (as has been captured by others with historical award winning writings), that We (the Royal We of our Sovereign) wanted to have people of limited means being able to partake in the patent system.

      This too is something that should be noted when we discuss changes to the patent system that have costs associated with them. Our original system was very cognizant of the difference between those with money (typically established businesses that tended to operate more on a serf/guild basis) and those whose innovation would threaten the established businesses.

      As can be seen in our (bi-laterally supported – read that as ‘captured’) AIA machinations, this fundamental premise has taken a back seat of late, and a return to the originating principles should be not only kept in mind, but actively pursued and protected.

      1. 13.1.1

        Registration only? The EU tried to introduce an EU-wide registration system for 10 year term utility patents. The UK is against. It sees an imbalance between potency and ease of acquisition, an imbalance that hands too much power to registrants.

        Mainland Europe sees it differently. Germany is very fond of its national 10.year term utility patent registration only system.

        The difference is explained by how the respective countries do civil litigation. In England it is English common law, adversarial and last resort. In Germany the courts can be understood as a branch of the Ministry of Social Services, with litigation a first resort. However, a golden thread of “proportionality” runs through all court procedure and all relief obtainable.


          Not sure what your point is here MaxDrei.

          You offer two views and seem to be saying that both are in equipoise.

          And neither view really addresses the points of the consideration for our Sovereign, so either of the views you share do not seem to have any “impact” on our system.

          Which boils down to a response to your post of “So what?”

          I think that you wanted to provide more than a “so what?” — but what that is, is just not clear.


            …maybe something can be ascertained from the two views of court actions (last versus first resort).

            The way that our Sovereign has set up the court system here is at times attempted to be portrayed as a “Great E V 1L” (along the mythos of the “Oh N0es, Tr011s” propaganda push). However, that litigation system (with its warts and all) is how our Sovereign has set up a system for parties TO deal with legal rights.

            Not sure how this tidbit of how our sovereign can be folded into what you are trying to offer, but at least maybe you understand a little better the difference between reality and rhetoric.


              A separation of powers is not unique to the USA. Throughout the EU, the strict separation of the 3 branches of democratic society is sacrosanct. My cheap shot about the courts in Germany being seen as a branch of social services was not intended to suggest otherwise. Germany operates a “loser pays” rule in civil litigation. But the quantum of legal costs payable by the loser to the winner is known as soon as the judge sets a “value of the case” in a preliminary Hearing. The court maintains a Table of values. In it, you input your allocated value of the case, and it outputs the number of Euro of legal costs, that you will pay the victor, if your action fails.

              As I say, proportionality. Little Guy can take an informed decision, after that preliminary Hearing, whether the risk of going ahead with the action is bearable.

              You say your Sovereign wanted justice for all, including Little Guy. So does Germany. And it succeeds, more so these days than England. For me, justice for all, not just in theory but in day to day practice, is a hallmark of a civilised society.


       how would your views carry into our Sovereign; given its choices, including a lack of Germany’s “value of the case,” the presumption (and level of presumption) of a granted patent BEING valid, and the fact that we generally abhor a “Loser-pays” system, while we have set up litigation as an avenue of redress?

                I am still not clear as to what point you were trying to make in our context.

                (I certainly hope that there was more than a “my eyeglasses work for me, so here, you use them and they will work for you”).

  3. 12

    A dumb article written by two people with no real patent litigation experience whatsoever, except short stints as junior associates in BigLaw (probably writing memos and doing document review). Anyone with real experience in patent prosecution or litigation knows that giving examiners more time will not significantly increase patent quality, and for those few patents being prosecuted in order to be litigated, those applicants will always find ways to bamboozle examiners into issuance.

    I have literally read thousands of prosecution histories in my career, and in most cases, me or a member of my team was able to find far better prior art than the Examiner in about 10 minutes. The issue isn’t time, it’s skill. Many examiners simply don’t have enough understanding of the underlying technology or state of the art, or enough creativity and inquisitiveness, to be able to figure out where the strongest prior art will lie. Giving them more time isn’t going to fix that; it’s just going to result in a flurry of frustrating new rejections that are easily traversed and overcome, as examiners use the extra time to improve their productivity counts. There have been probably a dozen big PTO “patent quality” initiatives launched since the 1990s, and none of them has done anything to improve the quality of patent examination.

    Lemley is dead right on this; you’re better off using post-grant proceedings to do the detailed “deep dive” into validity. Only a tiny percentage of issued patents are actually litigated or enforced, and those are the only ones that create potential problems for third parties. And even if you improved examiner effectiveness (don’t hold your breath), an examiner simply cannot match the quality of an invalidity challenge put together by a motivated third party, highly knowledgeable in its own field, which is subject to a rigorous adversarial process like IPR.

    1. 12.2

      Your comment, LR, begs more questions than it answers. Of course a PTO Examiner cannot “match” the rigour of the enquiry into validity that is prompted by litigation. But is that a reason to give up trying to improve pre-grant filtering out of plainly invalid claims?

      Up until 1978, the UK Patent Statute offered pre-issue inter Partes opposition on obviousness. But Opponent had to prove that the claimed subject matter was not just “obvious” but “clearly obvious”. To the contrary, in post-issue proceedings in the expert UK Patent Court, the test was “obvious”. In this way, Applicants could be sure of getting their post-issue “day in court”.

      Suppose the examination in the PTO, prior to issue, is conducted by a 3-member Examining Division that possesses exactly the right technical qualifications for enquiries in the technical field of the claim. And suppose that the PTO search report it has the benefit of is of excellent quality. How far short of “matching” the validity enquiry in litigation is that then? How much of the validity enquiry during litigation is in reality straw-clutching, obfuscation and dust-kicking? Where shall we start the process of improvement? In the PTO, in the courts, or perhaps in both?

      1. 12.2.1

        MaxDrei, I have to respectfully disagree. Subjecting pre-issuance patent examination to a three-member examining division is way too much investment for too little return. You are right, MaxDrei, that would probably improve patent examination quality to some extent, but I don’t know how much, and it would multiply the filing fees and/or contribute to further application backlogs. It’s just not fair to bog down the entire examination system because of the 1-2% of patents that might be asserted post-issuance.

        With respect to litigation, I fully agree, MaxDrei, litigation in court is a pretty bad way to test patent validity post-issuance. Juries are notoriously reluctant to invalidate patents largely because of the “clear and convincing” burden of proof, so defendants don’t really win those challenges unless the jury hates the patent owner or its trial expert craters on the stand. In East Texas, the judges still allow plaintiffs to tell the jury in closing argument that “clear and convincing” is the same standard the state needs to take your children away and terminate your parental rights! Try to win an invalidity challenge after that argument is made… And juries do not have an understanding of technology at all (any good plaintiff’s lawyer will make sure to kick off any prospective juror who does), so they’re easily snowed and confused by bogus arguments. The most common tactic of patent owner experts is to distinguish prior art on distinctions that have nothing to do with the claims, or just making bogus arguments about the disclosures of the prior art. The jury has no way to independently evaluate these arguments, and when the plaintiff successfully sows confusion, it makes it impossible for them to conclude the “clear” and convincing standard has been met. And on top of all of this, you have the costs of going through an entire discovery process and trial, which can cost millions. Litigation stinks as an effective tool for the public to remove garbage from the patent landscape.

        In the end, the best post-issuance challenge in the U.S. to sift out and remove bad patents is, by far, IPR. The PTAB can usually sniff out and disregard what you call “straw-clutching, obfuscation and dust-kicking,” from either party. The system is not perfect, pre-institution practice is a Due Process debacle and there are too many inexperienced judges, but it’s currently the only system we have that allows some semblance of a rigorous and (comparatively) affordable validity challenge.


          I was not expecting such a thoughtful response. LR, you reserve something in response. Here goes.

          The 3-member Division is unique to the EPO and stems from the 1978 origin of the EPO, when PTO examiners from all over Europe arrived in Munich to begin their work as EPO Examiners, under the just enacted European Patent Convention. It was thought at the EPO that consistent examination of obviousness was needed, as highest priority, right from the get go. Having examination conducted by an international team of three was seen as the way to deliver consistency, straightaway, with the Examiners learning from each other and getting ever more consistent with time.

          Of course, it was the EPO-unique “Problem and Solution Approach” (PSA) laid down in those early days by the EPO’s Boards of Appeal that those Examiners were following. And the Boards were themselves populated by vastly experienced PTO Examiners so they knew they needed to lay down in their emerging jurisprudence an obviousness test that would be practicable for the thouands of routine examinations in the pipeline .

          And of course the terms of reference of the EPO patentability search were built around the PSA. Focussed on the problem, the solution, and Applicant’s fall-back positions in the dependent claims. So it is that, when a case is opposed at the EPO, it is typically difficult for an Opponent, even with a generous budget, to find prior art closer than that which the EPO Exam Division had already applied.

          And of course when an EPO Board finds your duly issued claim invalid, there is no further right of appeal. So the established caselaw of the EPO Boards of Appeal holds sway in Europe. So the substantive law of eligibility/patentability/validity in Europe is crystal clear. Only the facts are complicated. And that’s enough to fuel huge patent battles in the courts of Europe.


            I can see value in MaxDrei’s: “Having examination conducted by an international team of three was seen as the way to deliver consistency, straightaway, with the Examiners learning from each other and getting ever more consistent with time.

            In fact, to a certain degree, our own sovereign has adopted a variation of this — we now have the ability to request a pre-appeal conference, wherein a very similar multi-examiner panel is convened for review.

            I have an about 95% success rate in having that multi-person panel finally accept what a single examiner long refused to accept by way of argument and what either (or both) the application and the cited references actually teach.

            It’s not perfect, but it certainly helps overcome a condition in which a bureaucratic single examiner has become entrenched in an entirely unreasonable position.


              Anon, a 95% success rate for pre-appeal conference requests is far higher than many other PTO practitioners report. Congratulations. You should publish successful tips.
              Max, the US PTO has also had 3 examininers decide reexaminations [following a Canadian example], and has 3 APJs on Board final proceedings for everything. But note the fees to get that.


                My tips:

                – Have sound positions and know the law, understand the art and the application, and understand MORE THAN just “key word cites.” SO very often an examiner latches onto a key word cite and does not understand the actual context of the use and application to which that key word is being used. There is rampant misapplication of references based solely on the presence of “key words.”

                – Do not be afraid to challenge MPEP “versions,” as the MPEP itself is known to be replete with improper takeaways of case law. Several times I have actually used a ([n] improper) cut-n-paste form paragraph “citation” of an examiner to show that the actual case held the opposite of what the examiner was trying to do.

                – Apply the Office memorandum which creates protocol binding to the examiner – which includes Office memorandum of what must be undertaken prior to application of 101 analysis, the nature and limitations of when it is proper to take official notice (even if the Office refuses to call what it is doing “official notice”), and be willing (and able) to point out weaknesses in certain Office Memorandum (i.e., mere attempts to use Official Notice, but then must apply full rigor if that attempt is challenged, as in the Berkheimer Memorandum).

                – Lastly, have a true passion for (and belief in) the value of patents and why innovation (and patents) benefits all.

                The “dealing with single bureaucrat” syndrome can be a royal pain in situations of both an underling and a person with their own signatory authority – of course, for different reasons. For underlings, often I find that the underling is SO unsure of what they are doing that even if they “report” your position faithfully, the SPE just does not listen closely enough to give credit. For the “more seasoned” examiner, it is sadly somewhat rare that a true “listening mode” can be initiated outside of the notion that others are looking more carefully at the positions being advanced.

                All in all, there remains a large remnant of the “Just Say NO” Reject Reject Reject culture – not to say that conscientious examiners are totally missing – I do have the joy of dealing with several like that as well.

    2. 12.3

      Re: the comment that in “thousands of prosecution histories” .. “my team was able to find far better prior art than the Examiner in about 10 minutes.”
      Maybe not that fast, but certainly very frequently, for good reasons. Examiner word searches of prior patents are not going to find prior art described in different words. Especially in foreign origin applications and patents. Also, not going to find prior art only found in product instructions, service manuals, etc.


          All of the worst scrivening is in the logic arts.

          Guess why.

          Cite please.

          (and I would counter that it is more than clear that the very worst scrivining is NOT in the “logic arts” as you would attempt to use that term, but that the words of the Court itself (and courts, following the lead of the Court), for which the scrivining is FAR worse.

  4. 11

    Increasing examination time by a factor of 10 would not increase “patent quality” by even .0000000001%.

    1. 11.1

      I cannot agree.

      I do “get” the notion that a mindless “more time” only means that more of the same process will occur, and that truly “re-engineering” the process is what is needed.

      But there are conscientious examiners out there that would benefit from more time.

      And reflecting another comment, currently stuck in the “count filter” moderation limbo, actually focusing on improving examination quality (and viewing the’more time’ if only as a piece of that focus) is eminently better than the wayward post-grant “inspect quality in” with no actual feedback loop into the process that was sold with the AIA.

    2. 11.2

      That is correct because ten times more time isn’t enough to deal with the ridiculous issues created by “inventions” in the abstract realm of data processing logic.

  5. 10

    After reading the first two paragraphs, I concluded the authors have no real world experience whatsoever. And lo and behold: Michael Frakes spent a whopping two years as an associate at a biglaw firm that has a meager-to-non-existent patent prosecution practice. Melissa Wasserman clocked no time at all doing patent prosecution, unless one counts two summers as an associate at IP firms; in my book, clerking for Judge Moore, an appellate judge, doesn’t count in that department either.

    This no doubt explains why these two individuals, like so many academics, focus on the “false positives” of patents that ostensibly shouldn’t have been granted instead of the (much more difficult to detect) “false negatives” of patents that weren’t granted because the inventor or company ran out of money due to the PTO playing procedural and substantive games (see recent posts of David Boundy on this blog and for illustration such games). Those ungranted patents are no less costly to society, and perhaps more so: no drug company is ever going to develop a new drug for which there’s no patent protection.

    Equally interesting, and almost equally ignored, is the effect of invalidation of clearly valid patents on invention and product development. Think Sequenom. Studying the effects of decisions like that one on the allocation of resources by investors and large companies would be worthwhile.

    I don’t see the point of professors engaging in intellectual fellatio to tell us something we already know, namely that giving examiners more time to examine might reduce the number of clearly invalid patents granted.

    1. 10.1

      Well said. You should add that we have no idea if this is a paid “law journal” and we no recourse if the “professors” have acted unethically. This blog has turned into a forum for large corporate advocates to post their propaganda.

    2. 10.2

      On the money, Atari Man….
      I spend much of my time in patent prosecution. In the art units where most of my cases fall, the most common issue isn’t that the patent examiner does a crummy job and allows a questionable patent. Rather, it is that the patent examiner does a crummy job, and that immediate PTO management refuses to address simple and obvious errors by the examiner, so an increasing number of cases require appeals to resolve. Some folks, regardless of size (both small and large outfits have limits!) just give up, and a patent is never issued. On occasion, the rejections are so outrageous, and the inventor’s budget sufficiently limited, that I’ve taken up some appeals on a pro bono basis.

      Crazy things occur regularly!!! Like a double patenting rejection over restricted/withdrawn claims in the same application, is an extreme example where the supervisor and pre-appeal conference team refused to fix the rejection which had no basis in law.

      I’ve seen some extremely useful and valuable inventions never get patented where the inventor loses patience with the process, or runs out of money. In one example, the examining attorney indicated that she had submitted a Notice of Allowance for approval. A few days later, she indicated that the SPE had refused to approve. It turned out that a member of the SPE’s family evidently owned a business that had a product line which would be hurt by the invention. OK, the inventor didn’t have funds for that fight, and no one at the USPTO seemed the least bit interested. Who had what goods on whom, in that situation? Really outrageous….

      In a recent example, an examiner called me out of the blue, saying that he wanted to issue a notice of allowance, and that he had done a search, and had some art. So, he wanted to write a claim which he considered allowable. Never once did he offer the patent number or name of a paper as a proper NPL cite, so I could understand the prior art. No office action has ever appeared. He asked that I authorize email communication, so a draft claim was sent. It was totally worthless. The claims are directed to a product in a “hot area” where the inventor had revealed the invention to some “big players”. I revoked the email authorization and told the examiner “no sale” – that we would wait for regular examination. Why would an examiner expect a patent attorney to “accept” an allowance when the alleged prior art had never been made of record, and not even revealed informally to the attorney handling the case? Seems like a pay off situation to me. I talked to a few folks at the USPTO. No one interested. Maybe the FBI will be interested, but they seem busy on more important things. How many examiners have some crooked deal going on? Is this an increasing problem? Seems like it …..

      Moreover, I’ve had some really prolific inventors decide to totally give up on the patent system, and refuse to file any new patents for their company. The companies have basically decided to just keep as much as possible secret as long as possible, and spend the money elsewhere. They see no return on investment in the patent process, for their type of businesses, due to the current environment at the PTO, both as a result of prosecution difficulties, and as a result of PTAB validity challenges, and their appetite for the patent world has diminished due to r the prospects of being able to rationally afford litigation in some product lines, and the lack of injunctive relief.

      Anyway, the point is that there is a lot that could be done to improve current examination, and not one damn bit of it would require giving examiners more time per case. But, it would REQUIRE more intelligent and hands on supervision of the work of the examiners. Perhaps the “multiple examiner” plan, used elsewhere in the world, would be a step in the right direction, both for the kinds of problems mentioned above, and for the kind of issues alleged to occur by the ivory tower types who have virtually no patent prosecution experience…

      Meanwhile, does anyone have a count on the number of boats in Annapolis that are available for patent examiners on any given summer weekend?

      1. 10.2.1

        Take off the tin foil.
        The examiner couldn’t find good art but felt the claim looked too broad. In an attempt to avoid a bad OA or having to explain what appears to be a broad claim on allowance he gambled but you didn’t bite.


          How is “take off the tin-foil” a meaningful reply to the points presented?

          Joe, you appear to want to sanction p00r examination in some “throw CRP at the wall to see what sticks” mindset.

          We shouldn’t be wanting that type of “gambling.”

          As I have already noted, that type of gambling only makes my clients spend more money (regardless if any actual solid art is out there).

          That type of gambling helps no one.

      2. 10.2.2

        Never had anything like what you wrote happen to me or any of my co-workers over a combined total of centuries of prosecution.

        Anecdotes like yours are less than worthless.

  6. 9

    My bet is that patent applications from inventions made in the US will drop 20-40 percent in the next recession. Already patent application are down or flat for years for inventions from US inventions. All the Chinese applications are masking it.

    The real crisis is that patents have dropped in value by about 80-90 percent since the AIA was passed. That is the real story. The real story is that corporations are now thinking that they can cut their patent budget by 50% and take any tech that someone else comes up with.

    That is the big news. But I guess Google wouldn’t pay these “professors” to write a paper about that.

      1. 9.1.1

        So if I read this article and have an ethical complaint, then what recourse do I have? None is the answer.


          if I read this article and have an ethical complaint, then what recourse do I have? None is the answer.

          No, you can post about it here.

          And then we can laugh at you. It’s a win-win situation!


            That is the other problem with this blog. There is MM that harasses anyone that is not anti-patent.


              If Malcolm is posting that “we can laugh at you,” you are doing something right.

              (But shhh, don’t let Malcolm figure this out)

    1. 9.2

      The real story is that corporations are now thinking that they can cut their patent budget by 50% and take any tech that someone else comes up with.

      True in the software space. They’re almost halfway towards sanity! Congrats to those companies. Amazing that it took so long.

      None of the companies that I work for are thinking that, however. None.

      1. 9.2.1

        Why would it ever be good for a software company to think they can take any tech that someone else comes up with? If people WANT to give there inventions away as part of the open source movement they certainly have the right to do so but FORCING them to do so is a mistake. I have yet to see anyone give a good reason the software cases that have been allowed by the courts (enfish for example) should not be patented either philosophically or economically.

        Further I work with biochemical companies and I can tell you THEY are doing the same – anyone who makes diagnostic methods or kits is either getting out of the business or keeping their method in the dark as much as possible (which due to FDA regulations is nearly impossible). Then there is the complete lack of any company doing research in natural product drug research. We have basically killed our drug research industry and since we were the only country doing any (since it was only in the US that drug companies can make any money) we have done so for the entire world.

  7. 8

    6, I can only note that if “frustrations and industrial uncertainty, etc. over a wrongly issued patent” are that strong, why is it that so few of them ever take advantage of their opportunity to cite prior art in such pending applications of others, or file reexaminations or IPRs against such patents unless and until actually threatened with infringement assertions?
    Yes, we should all logically want more extensive prior art searches and claim analysis in patent application examination. But the hard question is how can it be paid for?

    1. 8.2

      “are that strong, why is it that so few of them ever take advantage of their opportunity to cite prior art in such pending applications of others, or file reexaminations or IPRs against such patents unless and until actually threatened with infringement assertions?”

      Probably a lot of reasons. First, not that many corps and people can keep up with all things issued in their area(s). And still fewer can justify the cost to the bean counters to search/go through the trouble. A sense of wanting to efficiently infringe etc. etc.

      “But the hard question is how can it be paid for?”

      I totally hear you, but if the only justification is “herp it’ll cost too much” then we need to go forward explicitly understanding that we’re actually meaning to do a shoestring, or at best moderate, cost search. And everyone should understand that’s what is happening. I personally don’t care whether the policy call is made to be a great, or shoe string all that much, but I do care if muh immediate bosses think it’s supposed to be supar while their bosses are handing out beans only for the shoe string and everyone else in the world pretends like it’s a moderate search. It’s nothing but overworking me and others under my boss while everyone else doesn’t understand what’s happening. Though like I said below I would suggest what I suggest below.

      1. 8.2.1

        A sense of wanting to efficiently infringe etc. etc.

        …which is a real problem that needs to be addressed.

        One way of doing that is to make it painful to willfully infringe. Take the “efficient” out of “Efficient Infringement.”

        Employ the Teddy Roosevelt “Big Stick” (along with the carrot approach).

        Of course 6, we both know that to do that we need to overcome the Liberal Left “participation trophy” mindset and embrace a bit of “tough love.”

  8. 7

    Since the USPTO is user-funded, the un-answered question re the above summary is: how much would user fees have to be increased for increased examination time? Presumably the estimated $660 million dollars, because I cannot see how more examiner examination time would Reduce prosecution costs, as alleged? Does any current actual practitioner? Just as one example, reductions in first action allowances would clearly increase claim-narrowing amendments and other increased prosecution. That was already demonstrated in spades during the Dudas era disaster.
    This is not an academic question, because such a proposed big increase in patent fees would fly through Congress [not] like a lead balloon. It would be strongly opposed by small inventor organizations, universities, and many others with political influence. Also, high patent fees would to some unknown extent discourage some new filings and thus discourage some public disclosures of improvements in new technologies, a societal cost not accounted for here.
    Even assuming there was really valid data for the total economic cost of invalid patents. More accurately, the costs from the less than 5000 patents ever asserted annually having asserted claims so broad that those claims are infringed but invalid. Including the majority of patent suits that are won by defendants on non-infringement, not invalidity, would be invalid data. But is not most of that cost due to the very high costs of litigation in our U.S. court system, with its virtually unlimited discovery costs, rather than patent examination quality?

    1. 7.1

      Somewhat true, but it wouldn’t be the whole story as corps would likely cover the lion’s share, and they would also save the most in litigation down the road.

    2. 7.2

      Also note that improved PTO application search and examination could only improve finding better patent and publication prior art, and hopefully better 112 examination, but not any of the other grounds on which claims are held invalid or unenforceable in patent litigation, including public use, on sale, inventorship, etc., etc.

    3. 7.3

      high patent fees would to some unknown extent discourage some new filings and thus discourage some public disclosures of improvements in new technologies, a societal cost not accounted for here.

      Right. The US might end up looking like Europe, a backwards paradise for the Amish where nobody has invented anything or written any new software in decades.

      Since the USPTO is user-funded

      Something that can never, ever change because first we have to build that giant wall to keep out the brown people whose country we ravaged 150 years ago so the South could expand slavery.

      1. 7.3.2

        I would certainly say Europe has much less innovation, much less economic growth, and much weaker economies than the US. I would also say I agree with you that we should not have an innovator funded USPTO but never going to happen.

        I will not respond to the rest as it is unrelated to the subject of this post and irrelevant. I will say however that things my country did 150 years ago I have no guilt over…the only things I have and should have guilt over is what I have done or was done in my name since I was alive.

  9. 6

    Two thoughts come to mind:

    Under the EPC, a deficiency of clarity (Article 84, EPC) is a reason to refuse an application, but excluded as a ground of invalidity post-issue. In consequence, the EPO examines for clarity (definiteness) very strictly, precisely because it understands that the courts have the burden of finding meaning in whatever has issued. Here is yet another example of the use of obliquity to achieve public policy objectives.

    Up to 1978, the UK Patent Office examined (very strictly) for clarity and novelty, but not at all for obviousness. The thinking was that obviousness is impossible (in ex Parte proceedings) to examine fairly. It must therefore wait for inter Partes proceedings. With only one in a thousand patents getting litigated, this was a very cost-effective system.

    1. 6.1

      Here is yet another example of the use of obliquity to achieve public policy objectives.


      From Merriam-Webster:

      1 : deviation from moral rectitude or sound thinking.
      2a : deviation from parallelism or perpendicularity also : the amount of such deviation.
      b : the angle between the planes of the earth’s equator and orbit having a value of about 23°27′ obliquity of the ecliptic.


            You’re welcome, anon. The book was written by an eminent economist. So, once in a while, even one of them can come up with a helpful and convincing insight, eh?

    2. 6.2

      Up to 1978, … this was a very cost-effective system.

      So…, gone for 40 years, and not seen since, but still want to “give it a go”….?

      Not saying that this is a bad idea, but if it were a good idea, why has no one attempted this in the last 40 years?

      1. 6.2.1

        I don’t know. But I’m sure it was a complete and utter surprise for the oldies in the UK to see how smoothly, efficiently and fairly the EPO examined obviousness, already from the get go in 1978.

        And it still does. And, if it ain’t broke, don’t fix it.


          …so your takeaway is what exactly?

          Go back 40 years for what was an efficient system, or stay with the current (in)effcient “not broke so don’t fix it” system?


            Let me be clear. The EPO way to examine obviousness is at the other end of the spectrum from “inefficient”. No Office examines obviousness as efficiently as at the EPO. That’s what is not broke and so does not need fixing. Where are you seeing inefficiency?

            The takeaway? The world has changed since the 1970’s. It is no longer helpful to industry for a world-leading Patent Office to eschew pre-issue examination for obviousness.

            So, the judges who implement the statutory obviousness provision must lay down a template that the Patent Office can follow, for the efficient and economical examination of obviousness, pre-issue.

            A robust and real-life form of TSM for example. Like at the EPO.


              The takeaway? The world has changed since the 1970’s. It is no longer helpful to industry for a world-leading Patent Office to eschew pre-issue examination for obviousness.

              So… the takeaway is TO fix something that was not broken…?

              Not sure if you are catching the use of your own phrase in a way that creates a conflict of takeaway…..

              (and no, I am not saying anything about any EPO “being inefficient” and there is no indication that that was any part of what I was saying). However, you are the one that postulated the “not broken” nature of the UK “oldies” that for them their system was not broken (you state how efficient they were), and yet change to the “not broken” system is also stressed by you to be a good thing.

              So at the same time you appear to say “if it’s not broken, don’t try to fix it” you are also saying “the EPO ‘fixed’ something not broken and is much the better for doing so.”

              That’s why I asked you what takeaway it was that you were trying to put forth.


                What I was saying is that “it” (namely, the EPO way of examining obviousness) is not broken so doesn’t need fixing.

                1. What you ALSO said was that the (40 year ago) UK system was ALSO not broken, but that the “new” fixing is so much better that the phrase of “if not broken, don’t fix” does NOT apply (even as you WANT to apply it to the current EPO system).

                  You conflicted your own statement. All I am doing is pointing this out for your edification.

  10. 5

    On an almost completely unrelated note, the Secretary of Commerce notified USPTO employees today that should there be a partial government shutdown, the Office will remain open while running on collected fees for the next few weeks, if necessary.

  11. 3

    I have to wonder about front loaded bias “against bad patents” and a possible lack of Type II error (not providing grants either to full scope or at all).

    How much FUD of the boogeyman of bad patents taints the effort here?

      1. 3.2.1

        If your cognitive dissonance did not get in your way, you too would be concerned for your clients and their desire to obtain patent protection.

        As it is, well, we all get to see the effects of that cognitive dissonance.

  12. 2

    “solution to the patent quality crisis is to give patent examiners more time.”

    So how about requiring some financial disclosures from these “professors”?

    1. 2.1

      You profess to be an professor of legal ethics and you are fully aware that companies like Google are paying professors huge sums to produce papers to burn down the patent system.

      This is a disgrace. You should publish no articles from professors without full financial disclosures and without some recourse if their papers are found to have ethical violations.

    2. 2.3

      Let me get this straight, NWPA has an author come in and say that it is simply a matter of being worth the $$$ to increase examiners time to search (specifically) just as a societal goal, and NWPA states that he thinks the author says that this is a “solution to the patent quality crisis” that is being proposed.

      That wasn’t the proposal NWPA. The author proposed this simply as being worth the $$$ to do. Not a cure to the quality crisis.

      And then in his next post he thinks that trying to get more searching done in a patent office to bring it up to intl norms more or less, is part of a scheme to burn down the patent system.

      1. 2.3.1

        It is remarkable given that the quote was: “Even in the face of this compelling evidence, however, it is not immediately clear that the solution to the patent quality crisis is to give patent examiners more time”.



          You misread that “even in the face” line, as that was a build up to the Lemley paper, to which the authors here were aiming to tear down.


          They very much are proposing “a cure to the quality crisis,” and a crises of only looking at “bad patents.”

          This is not an objective effort.


            “You misread that “even in the face” line, as that was a build up to the Lemley paper, to which the authors here were aiming to tear down.”

            Not trying to tear it down, just saying that Lem made an assumption, and instead of making an assumption they plugged in what they think is a good estimate and arrived at different numbers/analysis. They’re scholars they’re supposed to get better over time as a whole.

            “They very much are proposing “a cure to the quality crisis,” and a crises of only looking at “bad patents.””

            So a person that says “it is not immediately clear that the solution to the patent quality crisis is to give patent examiners more time” is trying to propose a cure to the quality crisis? Looks to me like it is a paper in response to the office making their push to reevaluate times to give them some numbers and which happen to pop out an overall societal savings number as shown.

      2. 2.3.2

        You 6 are confused. I am complaining in general that I cannot trust anything that is posted on this blog. These professors present their material as if they are unbiased, but we have no way of knowing whether that is true or not. And there was an article on here published about how Google pays professors to write articles to abstracts that Google writes. Etc.

        Plus, I am not going to go into a substantive analysis of the article. The problem is I can’t trust the data and any article that makes statements like “patent quality crisis” is likely paid content.

        Ben, as usual, is just off his rocker.


          Sounds like you’re letting their rhetoric trigger ya bruh. I think all they were trying to do is say:

          “Should we increase the resources at the Patent Office in an effort to increase the quality of issued patents or should we forego those marginal investments and reserve a larger residual role for the courts? ”

          And they said in response that only on the $$$ total that they had available to them it seemed like savings could be had overall on their estimate.

          It isn’t even hardly advocating one way or another. It’s just one small factor for policy makers to take into consideration. Another might be that perhaps policy makers should leave things the way they are currently where they get plenty of unpaid OT worked to complete larger searches than should be being carried out and get even more bang for the already meager search dollar, purely because they get such a good deal. But those are just two considerations.


            letting their rhetoric trigger ya bruh

            compared to your obtuse seemingly not even “getting” the rhetoric….?

            Not sure which is better, the little piece of sky is falling or the “what me worry” lack of awareness.

            I have to say that the seeming lack of awareness is worse.

  13. 1

    I can’t speak to what would happen across the whole office, and I’m sure the number of issued patents would go down a bit. But in my neck of the woods the patents we issued would just different in scope, often narrower. Though they would also be higher quality. Overall, at the current amount of money people are paying for applications (esp the corporate fees) imo the time should have been increased some regardless of the overall rational ignorance or not, just as a service to the applicants if nothing else, by the gubmit.

    Still this article could have some use in giving the overall societal justification. Personally I would think that the savings in the amount of frustrations and industrial uncertainty etc. over a wrongly issued patent and patents as a whole probably dwarf the purely $$$ amount.

    1. 1.1

      Well said, 6; well said.

      Overall money-saving AND societal benefit?

      What’s not to like?

      Thanks Michael and Melissa. Lemley gets it wrong. Yet again.

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