by Dennis Crouch
This week, the New York Times published a lengthy staff editorial negatively focusing on the U.S. patent office as a “backwater” used for corporate gamesmanship, won-over by “legal trickery,” and undermining innovation whenever possible. It appears primarily a hit piece designed to destabilize and direct Dir. Kathi Vidal’s initial weeks as USPTO Director. She will be having to defend and explain any pro-patentee stance to her White House colleagues.
Despite musty rhetoric, the high level suggestions have merit – especially the first: “Enforce existing standards.” At its heart, the USPTO is a bureaucratic construct that needs constant attention to ensure that every examiner plays their role, and that none are lulled into complacency. “The best way to ensure that patents spur innovation instead of thwarting it is to set a high standard for what deserves patent protection in the first place and then to honor it.” Dir. Vidal’s primary role in managing a 10,000+ person agency is to ensure that her examiners have the tools , the training, and the time needed to ensure the highest quality examination. Although primary examiners have more training and experience, there is some evidence that they do a poorer job of ensuring that each allowed claim is patentable. This may be an issue of time, oversight, or something else.
The editorial’s second suggestion is to “improve the process for challenging bad patents.” In particular, the editorial calls for eliminating the FINTIV discretionary denials of IPRs implemented under Dir. Andrei Iancu. The bigger suggestions though are as follows: (1) Make it easier to challenge bad patents before they are granted. (2) Force secondary pharmaceutical patents to undergo an automatic review by the appeal board. (3) Rethink the legal structure for patent challenges. As part of this third point—restructuring the legal system—the essay attacks the Federal Circuit as merely an “echo chamber” of the pro patent lobby. For this point, the editorial quotes Matthew Lane of CAPA.
The third suggestion calls for calling for elimination of potential conflicts of interest. This seems to be primarily (and expressly) a pot-shot at Dir. Iancu who rejoined his old law firm after leaving the Office last year. The essay implies that Iancu acted unethically and improperly, but without presenting any evidence and in a way that feels gross. The PTO does not have the same revolving-door tradition that is seen in other major regulatory agencies, and so this complaint would not have made my top-three.
Four: Collaborate with other agencies. Most particularly, the USPTO and FDA need to get together and ensure consistency across the board. To get PTO approval, you need to show your invention is a major change, but for FDA or EPA approval, you want to show that your product is pretty much the same as what we already know and trust. These are all good points here made by Charles Duan who is a member of PPAC.
The final suggestion in the essay – “let the public participate.” Yes!
Yawn – more ridiculous anti-patent rhetoric from the overly liberal media. Sigh. As explained over on IP watchdog the article is ridiculous. Setting the high bar the editors want would inhibit innovation not encourage it. People innovate to make money, companies invest in innovation to make money. Also why should secondary pharmaceutical patents undergo direct appeal board review? Why are these patents worse than any other? News flash – they are not. Biotechnology could have been a great engine of innovation in America – but we made it unpatentable so now no investment and the human genome project sits widely unused. THAT is the real tragedy.
Surprised to just see this patent seminar advertisement:
“Over the past 80 years, approximately 40% of all FDA-approved pharmaceutical products have been in the form of pharmaceutical salts. … There is room, however, to add an additional layer of claim coverage. … Moreover, and under the right circumstances, patents containing such claims may expire substantially after the expiration of the other corresponding salt patents.”
The last sentence above strikes me as public feeding of red meat to those backing the NYT and others attacking “patent evergreening” [being ironically made by some of the very people attacking this NYT article].
Name names – who is this “guilty party” of improperly evergreening?
Want to improve patent quality? Let me file third-party submissions where I can point out that the claims are not enabled, or lack written description, or are not entitled to priority.
If an examiner misses one of those fatal flaws, there’s nothing a third party can do but watch public PAIR in mounting frustration, knowing that money will have to be spent that they shouldn’t have had to spend. (You can’t spell PGR without the G.)
Give me just a brief “hey, examiner, by the way…” submission. I could do it in 150 characters. And let me do it after the first office action, when I see that the examiner missed it.
RE: NYT editorial suggestion four re collaboration between USPTO and FDA,
I assume they are referring in part to the recent Federal Circuit decision in Belcher Pharmaceuticals, LLC v Hospira, Inc. (decided September 1, 2021), wherein an applicant withheld material information from the USPTO and also made inconsistent representations before the USPTO and the U.S. Food and Drug Administration.
Rather than simply relying on interagency collaboration, it might be better to expand the duty of disclosure to include those persons associated with the inventor or assignee who are substantively involved in any application for regulatory review and approval of a product or method claimed in a patent application. This could ensure that positions taken before the USPTO and FDA are not inconsistent or contradictory. While in the Belcher case at least one person already had a duty to disclose to the USPTO and did not, given the existence of different corporate teams involved in patenting and FDA approvals it need not be the case that there always would be such an overlap.
For example, one might amend 37 CFR 1.56 to add a new section that could read something like:
(f) The duty to disclose material information shall also extend in any patent application that claims a product or method that reads on a product subject to regulatory review and approval under the Federal Food, Drug and Cosmetic Act, the Public Health Service Act, or the Virus-Serum-Toxin Act for the commercial marketing or use of any human drug, antibiotic drug, human biological product, animal drug, veterinary biological product, a medical device, food additive, or color additive. Persons associated with the inventor, the assignee, or an anyone to whom there is an obligation to assign the application, who are substantively involved in an application for such regulatory review and approval also have a duty to disclose material information to the Office, including any inconsistent positions taken before the regulatory agency and the Office, even if such persons are not themselves involved with the preparation or prosecution of the patent application.
Wouldn’t the same concept apply to other areas of regulation? Air transport, Railroads, Mining, Utilities, etc. ?
The problem may be one of timing — The Office may only prescribe regulations affecting prosecution (prior to issue of a patent), and these other agencies may not become involved until after grant.
Very likely you are correct. But this could quickly become very complicated to implement, even with the NYT editorial’s proposed inter-agency cooperation. Which agencies? How many to include? Under what circumstances? What kind of information exchanges?
I focused my draft duty of disclosure proposal upon the FDA because, as Denis mentioned, there is clearly an inherent conflict: “To get PTO approval, you need to show your invention is a major change, but for FDA or EPA approval, you want to show that your product is pretty much the same as what we already know and trust.” I probably could have also included EPA regulatory review and registration of pesticide, biopesticide, and antimicrobial products under the Federal Insecticide, Fungicide, and Rodenticide Act.
For how many other situations does a patenting-regulatory activity conflict of interest exist? Can an expansion of duty of disclosure to regulatory approval teams be worded more generally without becoming vague and unworkable?
“To get PTO approval, you need to show your invention is a major change, but for FDA or EPA approval, you want to show that your product is pretty much the same as what we already know and trust.”
FYI — a “major change” is not the standard for patentability. A minor change can be patentable so long as it is novel and not obvious.
B-b-but is that minor change “meaningful” (even if non-obvious)?
Nanny-like judicial and academic-type critters want to know.
IDK. In practice, I’m not sure how any corporation would be able to comply; the left hand almost never knows what the right hand is doing at any given moment. Worse, the penalties for violations of the duty of disclosure can be draconian (e.g., disbarment(!), attorney fees, antitrust liability(!), unenforceability of the whole family, etc.)
Even the current duty of disclosure is practically impossible to comply with in the corporate environment…to the point most big patentees just eat RCE fees rather than check that IDS box saying “no prior knowledge”
“…it is in the path that your answer is not only NOT provided,…”
What dos this mean?
As far as left and right and whether I welcome it or not, sec. 102 and 103 evidence is apolitical.
This means that the actions (and lack of actions) ARE driven by political forces.
Your observation of 102 and 103 being apolitical is non sequitur to the actual drivers and viewpoints at play.
There really is politics at play here. I “get” that one would need not engage in politics to arrive at an amicable path forward, but the plain fact is that such an amicable way forward has NOT been taken in like forever (and I have been advocating for a better focus on what would actually drive examination quality like that same forever) SHOULD inform you that BEING “apolitical” is NOT what is going on.
Fair enough. To be clear, I understand the political conflict in strong patents v. weak patents debate and the individual rights v. public rights debate. etc. Of course patent reform is political. My comment about political was directed to the range of comments on comment 10 that now appear to have been deleted.
That aside, please help me out.
Is it the left or the right who will say,
We shall not find a better way to identify factual evidence in patent law?
I ask because prior art addressed as factual evidence and how one goes about identifying it has never been discussed in the 20 years that patent reform has been a political issue. All you hear is examiner and time. Nothing else. The USPTO examines applications exactly as they did in 1836.
“We shall not find a better way to identify factual evidence in patent law?”
Actually, PTO management expresses interest in “AI” searches on a somewhat regular basis.
The problem is that today’s ML is nowhere close to being able to interpret and search deliberately obscure text.
Actually Ben AI searches is the only improvement the PTO has ever suggested and we are long way off from seeing that materialize and then you will still a human to affirm.
Finding factual evidence is a learned skill. It can not be applied in every application but it certainly can in some. Right now the learned skill is reflected in successful IPRs. There is a lesson in that.
What exactly is that lesson?
(and why is not captured and implemented PRE-grant?)
The majority of patents 55% invalidated in IPR litigation are invalidated with patentability search type art, that is US patents, US publications and 2% foreign patents. The people who find this art have one job only and that is to find evidence directed to IP questions, namely, patentability, infringement or validity.
The lesson is that people who are specifically motivated to find prior art will do the job better than someone who is not specifically motivated.
It is possible to capture this skill pre-grant, however not under our current system where there is no mention of searching in policy, regulation or law, unlike Europe where it is discussed in their founding document.
“The lesson is that people who are specifically motivated to find prior art will do the job better than someone who is not specifically motivated.”
I don’t see how this is relevant to our world, as the “stakeholders” will never allow the system to so strongly motivate examiners to find prior art. There’s a reason why today’s system incentivizes allowances.
Perhaps you could craft a system where “Public Defender Examiners” were specifically tasked to build a case against applications (and evaluated by their success rate), and a separate PTO division tasked with adjudicating the the process between applicants and the public Defender examiners… but that would be absurdly expensive. That is getting into trying to achieve perfection where perfection is not necessary.
Not sure your numbers are adding up, given that IPR is restricted to to art “with patentability search type art.”
That’s how the law was written.
What I am asking for is different. I am asking that ANY “quality” system actually have a meaningful mechanism for taking “field data” (say, from a real life manufacturing warranty program) and feed that data back into the FRONT END process.
On that aspect (practically by design) there is NO lessons learned.
And no, that type of “lesson learned” NEED NOT come from a Euro view of instituting an applicant search requirement. Further – as Greg is likely to tell you, the Euro and US numbers are similar, so you will not get a “lesson learned” that you think that you will get, eh?
Greg DeLassus @ 6 said
“As Josh Landau notes, the rate at which EP patents are invalidated is basically the same as for US patents.”
Josh Landau runs a blog called Patent Progress. He is pro IPR.
I can’t reply to your last comment directly.
My numbers come from here.
link to ilr.law.uiowa.edu
I’m saying that the references found via IPR would be found by a patentability search not a validity search and that the patentability search was not done. Neither the examiner or the applicant conducted a patentability search beforehand. That is exactly how the Law was written. We agree.
Your question about the front end process, I know as a researcher that would be GREAT but I don’t see how that will happen,
I absolutely reject “applicant search requirement” nothing I said implies that. On the other hand I think the applicant should have more options than the one size fits all we have now.
About the EP/US comparable numbers, today was the first I’ve heard that. I read Landaus’ blog too. I’ll look for that.
Thanks for the feedback.
Greg is Greg DeLassus – it would be his comments on this blog.
Professor Kayton made the point that patents can be the antidote to antitrust. Big companies with access to capital and significant market share do very well without patents (or if they get patents, they settle for many very narrow ones and enter litigation settlement agreements with a stack of them that they say the other side “may” infringe and that may be asserted if the other side demands too much). In many cases the big companies are content to rely on their trade secrets (especially software companies). They do not want to see that market share eroded by upstarts with a better technology.
If such an upstart arises, they try to by the company on the cheap. If they cannot, they attack its IP so they can copy the technology without paying for it.
So the pro-patent folks are the little guys and their supporters. The anti-patent guys are the big companies and their allies. The big companies buy allies by contributing campaign cash to both political parties, meaning you get anti patent Republicans (remember Dudas and his anti-continuation rules?) and anti-patent Democrats. While the front page political fights are about gender, racism, immigration, the economic payoffs take place with much less attention from the public. That makes the NY Times piece somewhat unique. But it looks like they have joined the camp of the big companies.
If such an upstart arises, the[ big companies] try to b[u]y the company on the cheap. If they cannot, they attack its IP so they can copy the technology without paying for it.
Can you cite any specific examples of this?
Gee, maybe the Supreme Court case of i4I does not immediately come to your mind, but hey, Gregg – you be you.
The National Enquirer has purchased the New York Times.
The National Enquirer called and wants to know why you are picking on them.
They said that they get better and more believable stories from their current sources.
Rather unsurprising as Litmus tests go, of the top three US patent law blogs (PatentDocs, IPWatchdog, and Patently-O), two of the three blast the NY Times for their stilted and plainly anti-patent approach by their editorial board.
Only one indulges an elitist view of patents (that is, with disdain).
And that Litmus test is also reflected in the usual suspects – the sAme ones of typical commentators.
Dennis proves that, like the NYT staff, he’s out of touch with reality. Clearly neither he nor anyone at the NYT has tried to obtain a patent recently, let alone defend one.
Just a note from the trenches. When we file, we hope for a mature examiner who’s not going to get argumentative about obviousness. For small company clients, the cost of prosecution and its success are very much on everybody’s mind, especially the attorney. On the flip side, I have been in corporate environments with bottomless purses where they literally do not care about the cost or how much they drag it out however bad the patent.
It seems to me that the variability in examination practice is caused by the lack of time that an examiner is able to dedicate to examination. An obviousness rejection is a device for managing that time and the examiner will not get criticized for subjectivity. All these calls for improved patents will never be addressed until the standards (KSR for example?) are actually applied.
Great points. Thanks!
“It seems to me that the variability in examination practice is caused by the lack of time that an examiner is able to dedicate to examination.”
As much as I like to highlight the problem of examination time, I must disagree. The root to the variability problem is a system that enables management to be hands off with respect to individual examiners, and an examination system where examiners control an application until its abandoned or issued. Though OPLA probably deserves some credit as well for providing as poor guidance as they do.
“As much as I like to highlight the problem of examination time, I must disagree. The root to the variability problem is a system that enables management to be hands off with respect to individual examiners, and an examination system where examiners control an application until its abandoned or issued. Though OPLA probably deserves some credit as well for providing as poor guidance as they do.”
I’m sure he means only if we hold those other things constant. Even management intervening and actually being hands on wouldn’t cure the like half underfundedness though.
Ceteris paribus, we should expect hand-on management to exacerbate examining time issues. The money to pay management to actually manage would have to come from somewhere, and it would likely come from examining time and be justified as management taking their share of a balanced disposal for their greater efforts.
Actions like that would likely reduce examination variability despite less examination time, which was my point. Of course, I’d expect quality to tank, but that is a separate issue.
^^^^ an interplay showing why squabbling bureaucrats should not be coddled.
I ran out of TP; does someone have a NY Times handy that I can borrow?
Careful now PL. Yellow journalism is known to burn something fierce when it comes into contact with human skin.
Years ago – 2006 maybe – John Duffy (before he moved to UVa) published a law review article in which he noted that examiners cannot possibly spend enough time examining cases – too many cases for too few examiners.
“Worksharing” programs have ostensibly been meant to help ease this burden, but I don’t think they do, as, in general, patent offices are not willing to outsource their work to other patent offices, and national laws differ. An exception is Israel, which by statute enables applicants to gain allowance by virtue of an allowance in the US, EPO, JP, and certain other jurisdictions, but it’s a one-way street: none of those jurisdictions will grant an allowance based on examination elsewhere.
[E]xaminers cannot possibly spend enough time examining cases – too many cases for too few examiners.
Depends on what one means by “enough.” If “enough” means “an examination so thorough that it is truly unlikely that a defendant will be able to find a defect that the examiner missed,” then Prof. Duffy is surely correct. Is that what we really hope to achieve by patent examination, however? The ludicrously low fees charged by the USPTO suggests that this is not really the outcome for which we are aiming.
Rather, it seems (both based on the cost and the lived experience of what one actually gets out of a PTO examination) that the intended outcome is just to weed out the really egregious claims—claims covering the wheel, and fire, and suchlike. The PTO is there to sand the rough edges off of the initially filed claims. Beyond that, if you want something that is likely to stand up in court, you are free to hire a patent attorney to take care of such matters, but that is not really what the PTO exists to do.
If one really wants to pressure test every granted claim, then one should expect to spend (on each application) roughly the same amount of time and money that defendants spend on those claims that are asserted against them. In most instances, however, that would be pure waste. The overwhelming majority of patent claims will never be enforced against anyone, so why spend money as if they would. Instead, make sure that every claim gets a quick once-over, and then let the private market deal with those claims that require dealing as disputes arise.
” ..to pressure-test every granted claim .. one should expect to spend (on each application) roughly the same amount of time and money that defendants spend on those claims that are asserted against them. In most instances, however, that would be pure waste. The overwhelming majority of patent claims will never be enforced against anyone .. ”
Indeed, the only strange thing is those expecting to such get a Rolls-Royce level prior art search, examination, and invalidity immunity from a skate-board level USPTO search fee.
Perhaps then, Congress should re-write the law and REMOVE the notion of 35 U.S.C. 131 Examination of application (emphasis added).
The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.
I am not seeing any legal support for some type of cursory “mere screening” as being advanced as someone’s “wish as to how the law was.”
If the law doesn’t square with reality what’s one to do?
Fight the legal fight, of course.
…do not presume that reality is as would be proper.
Calling the PTO a “backwater” seems reasonable to me. “A place or condition in which no development or progress is taking place.” The PTO’s major change over the last 5 years was mindlessly recycling 1970s time allocations into a CPC based system. There are no real examination process improvements happening. And I expect quality to take a turn for the worse as work conditions further degrade, teleworking becomes more common in STEM jobs, and the salary premium for examiners disappears.
… and yet the deafening silence of calls to focus on “examination quality” (as opposed to a focus on innovators through ‘patent quality’).
One narrative is (still) preferred.
“It appears primarily a hit piece designed to destabilize and direct Dir. Kathi Vidal’s initial weeks as USPTO Director. She will be having to defend and explain any pro-patentee stance to her White House colleagues.”
As it took the WH fifteen months to get someone in the job, it seems unlikely to me that one NYT board editorial would be enough to cause the WH to take a strong interest in what the PTO Director does.
Although primary examiners have more training and experience, there is some evidence that they do a poorer job of ensuring that each allowed claim is patentable. This may be an issue of time, oversight, or something else.
The editorial’s second suggestion is to… [m]ake it easier to challenge bad patents before they are granted… [and r]ethink the legal structure for patent challenges.
These sound like good ideas, but consider me skeptical. As Josh Landau notes, the rate at which EP patents are invalidated is basically the same as for US patents. If the extras time, money, and training that flows to EP examiners does not result in a lower rate of post-grant invalidation, then probably nothing will.
It is pretty much impossible to contrive an examination system that will be as effective at identifying flaws as the adversarial post-grant confrontations. Nor does it make sense to pour the sorts of resources into all patents that go presently to only the most commercially important patents.
I know that this sounds disappointingly Panglossian, but the current examination and post-grant challenge systems are probably operating about as well as possible. Maybe there are another 2% or 3% of improvements to be squeezed in, but maybe not.
link to patentprogress.org
I tend to agree with greg on most of such, though he overlooks one rather large issue. Claim scope ultimately issued. I would say if you dump resources into the PTO you could narrow the scope up in more than 2%, and lessen the amount of VOT that is currently having to be taken on by examiners (which is ridiculous for bureaucratic work to even require esp when so many other agencies do not do this).
Lol – sure, let’s focus on improving the lot for bureaucrats…
“Lol – sure, let’s focus on improving the lot for bureaucrats…”
Unironically it leads to people having burnout and all anon, it’s a serious condition.
Coddling bureaucrats is part of the problem and cannot be a part of the solution.
[G]reg… overlooks… [c]laim scope ultimately issued. I would say if you dump resources into the PTO you could narrow the scope up in more than 2%…
You may be correct about that. Just to be clear, there are many definitions for “quality” in patent examination, and for simplicity’s sake when I speak of “improving quality,” I am using the very simplest definition of “quality” possible. In my posts on this subject, a “high quality” claim is one that survives challenge post-grant (either in court or the PTAB), while a “low quality” claim fails post-grant challenge. In other words, as I was using the term, “quality” is a binary category. A claim can only be either “high” or “low” quality in the sense that I was using the term, with no intermediate gradations. Therefore, a narrow claim that still reads on impermissibly anticipated or obvious subject matter is no higher in quality than a broad claim that reads on the same impermissible subject matter.
Naturally, you are right to say that a claim that only narrowly fails is, in some meaningful sense, a “higher” quality claim than one that fails more easily. It is possible that better resourcing during examination could turn more claims from “clearly invalid” to “barely invalid.” I take no position on whether that is a wise use of resources on net.
I don’t understand how Landau goes from
“27% of oppositions result in a final decision invalidating all claims of the patent, while the remaining 40% of patents are modified in some form and maintained as patents” (27+40=67)
and
“One study, examining German nullity data, found that—excluding cases that settled or were otherwise withdrawn—24% of challenged patents were entirely valid, 37% were partly valid and partly invalid, and 39% were completely invalid” (37+39=76)
and
“one third of the time it’s entirely invalid, and one third of the time you get a mixed result.” (1/3+1/3=2/3)
to
“Whether you challenge a patent at the PTAB, in district court in the U.S. or in court in Europe, or even at the EPO, around 40-45% of all challenged patents are determined to be invalid in whole or in part.”
Perhaps it’s because I’m lacking the analytical insight that WT suggests comes with a legal education, but I don’t see how Landau’s numbers match up the way he suggests.
Assuming I’m not missing something, and Landau’s comparison actually shows US patents are invalidated substantially less than EU patents, do you think we should cut examination time?
Ben, I’m puzzled too. But perhaps it helps to concentrate on the cases where the patent survives in amended form.
Some of those cases deliver for the patent owner amended claims with a higher presumption of validity, together with a scope still just as useful to the owner as the as-granted claims. Others survive with claims so narrow that they are no longer a threat to the Opponent.
In other words, some of those cases would count as a “win” for the patent owner and others as a win for the Opponent.
Roughly speaking then, perhaps half of all oppositions succeed, the other half fail. Which is as it should be, in a properly functioning system of dispute resolution where only 50:50 cases go to trial.
It’s pretty dang corrupt, but primarily for big tech. Patent trolls and pharma jockey for 2nd in favoritism. Inventors – who needs ’em?
“the essay attacks the Federal Circuit as merely an “echo chamber” of the pro patent lobby. ”
Probably largely true, but not necessarily a bad thing. And certainly not entirely true.
My comment is caught if someone has time.
“She will be having to defend and explain any pro-patentee stance to her White House colleagues.”
I wouldn’t. I would instead attack the “lolNYTimes”. As is propa.
“What evidence is there that the USPTO is backwater for corporate gamesmanship?”
NWPA, that is probably how it looks from the outside. Obviously the actual 103 standard announced by the courts (and other such standards etc.) are so vague and legalistic from the public’s view as to have them thinking it’s all just corporate gamesmanship. And to be fair, when the court imposed standards are so far from the actual wording of the statutes it’s not much of a stretch. Note I’m not saying those are the wrong standards for the US to adopt/have, they may well be the best ones to have. But the public would see such as just legal wrangling.
“At its heart, the USPTO is a bureaucratic construct that needs constant attention to ensure that every examiner plays their role, and that none are lulled into complacency. ”
Strongly disagree.
“Dir. Vidal’s primary role in managing a 10,000+ person agency is to ensure that her examiners have the tools , the training, and the time needed to ensure the highest quality examination. ”
“THE TIME”
Fat chance. They’re already underfunding the time by like half or so in many areas. They’re unlikely to just concede that is so and up it by double. Would be nice, but unlikely. And further, big picture, it probably isn’t money efficiently spent. Which is why it’s hard to truly persuasively argue for it to be done. You would have to be willing to adopt a MASSIVELY inefficient bureaucracy to get the times near right at present. Hard truth, but that is the truth. Might be worth it, but, gotta go forward with that knowledge aforehand.
“Although primary examiners have more training and experience, there is some evidence that they do a poorer job of ensuring that each allowed claim is patentable. This may be an issue of time, oversight, or something else.”
Obviously the time constraints. They’re just getting it done to avoid clear error standard on review and going about their day most likely. As is propa I might add, as that is the divine command from above currently with the current times alotted. It’s not like primary examiners don’t know that cases could be searched to death and get a few more claims art invalidated in terms of percent of total claims examined every year. Pretty much everyone is aware that if you spend 3+ days or more searching you’ll find more art and eventually some of it found late will be good for some cases. Tis just rare to have that happen for claims that are about to be allowed (that is which will get over all other art available for making art rejections), so that makes it inefficient.
Litigation (fact-finding) under English law is inherently more complex and expensive than under the civil law systems of Europe and Asia. The question is whether the USPTO can function any more efficiently, given the inherent constraints under which it must operate and which it is powerless to escape.
The aim should be to enforce the good patents, with swift and proportionate relief from infringement, while at the same time (and just as important) striking down just as swiftly, on request, all those granted patents which are restraining trade and should never have issued in the first place. Is that what currently happens in the USA? I doubt it.
I wonder, do the folks at the NYT have any idea at all how impossible it is, ex parte, within the USPTO (or any other Patent Office) to search the prior art as exhaustively as does a petitioner for revocation, hindered in business by a claim of a duly issued patent. Necessarily, the PTO caps the amount of time devoted to searching any one claim. In litigation though, there is no such cap and if you can just find (so to speak) the right single leaf in the entire Amazon rain forest the patent will fall.
I agree 6 that searching and more time for examination is the key to improving patents.
Notice that seldom if ever does the far left advocate for this. Why? Because their ideology is for the patent system to go away. They believe the country should be run by elites. They are communists.
If you want to improve searching you need to focus on it. Patent examiners are part time searchers and are not trained. The assumption is anyone can do it. 55% of all IPR invalidations are based on US patent art raising obvious questions about low hanging fruit. If you want insight in how to improve search look to private sector searchers who find the evidence e.g. the basic facts used in IPRs.
I don’t see what this has to do with left and right.
“”I don’t see what this has to do with left and right.”
Your answer does not — it is in the path that your answer is not only NOT provided, but that it is (apparently) unwelcome that the “Left” and “Right” come out to play.
“and are not trained”
Obviously not true. I have decent tier “search procedure” training, and I have outlandishly good on the job training in where to look, especially in my little sub-field. These days the issue is not that I don’t have enough primo art to look through, the issue is that it takes forever and a day over time allotted just to look through what is available in a good or great search.
It’s too bad that you don’t have something like a Union to help you out with that problem, 6.
Allow me to qualify this statement.
It takes two years to train a private sector searcher where their supervisor reviews every search product the trainee produces. Examiners receive two weeks at the Academy and their help from their SPE or colleagues. The private sector searcher is subsequently expected to find art in hundreds of classes/subclasses. The objective of the private sector searcher is to build a body of evidence that reflects “average skill in the art.”
If a search takes seven hours and there are 20 hours allocated then the skilled searcher should to that portion of the job and give the examiner the evidence to exam, just like in the private sector where the evidence is forwarded to an attorney.
What I’m getting is this. If it takes seven hours to
“If a search takes seven hours and there are 20 hours allocated then the skilled searcher should to that portion of the job and give the examiner the evidence to exam, just like in the private sector where the evidence is forwarded to an attorney.”
This sounds a lot like how the EPO appears to run examination.
In my experience, EPO searches are inferior. I base this on how I rarely use EPO art when their report proceeds my first action, and they frequently use my art when my first action proceeds their report.
I suspect that this is because searching is best done as an iterative process. Mapping references to limitations helps formulate further searches.
I would be surprised if in IPRs, there is no iteration between searchers and attorneys. That seems non-optimal.
And how often does the center-left/center-right/far-right advocate for more examining time? Seems to me that “seldom if ever” is correct.