Thursday, 13 October 2016

Improving patent examination: should we aim for an ideal system or just patch up what we have?

The U.S. Government Accountability Office (GAO) takes the occasional look at intellectual property, and last month published a short report with a title that reflected its conclusions: "Patent Office Has Opportunities to Further Improve Application Review and Patent Quality".  The summary of this 29-page paper states, in relevant part, as follows:
" ...USPTO examiners face a variety of challenges in reviewing patent applications and issuing high quality patents. Some challenges affect examiners' ability to complete a thorough review of information relevant to a claimed invention—or a “prior art” search—which is the most time consuming aspect of examining a patent application [while the report appears to view this from the examiner's standpoint, it can be equally true for the applicant, whose tortuous and obscure claim-drafting may be as much dictated by the need to weave round prior art as by any other cause]. For example, the amount and availability of prior art as well as the extent to which examiners are able to search prior art quickly using the search tools USPTO provides may present a challenge to examiners in reviewing patent applications [availability will be a problem for as long as an 18-month time-lag exists between the application date and the date of publication, though good training, use of existing tools and development of new ones will be able to improve things].  ...

USPTO is taking steps to address the challenges examiners face in reviewing applications and issuing high quality patents—most notably through the agency's Enhanced Patent Quality Initiative [this is another Summer 2016 project: see here]—but some steps have limitations and opportunities exist for further improvement. For example,
  • USPTO is taking steps to strengthen monitoring of examiners' work. However, USPTO still faces limitations in assessing patent quality overall, including the thoroughness of examiners' prior art searches, because, for example, USPTO has not established a consistent definition of patent quality or guidance on what constitutes a thorough prior art search for different technologies [the consistent definition is less important in the short run than a recognition that different technologies make different demands, and also that mature technologies pose different challenges to green-field ones]. Additionally, while USPTO has an overall strategic goal that includes optimizing patent quality, the agency has not developed specific goals and performance indicators related to patent quality and prior art search improvement. Without consistently and clearly defining patent quality and a thorough prior art search, and establishing goals and performance indicators to monitor examiners' work, USPTO will be unable to fully measure progress toward meeting its patent quality strategic goal consistent with internal control standards and leading practices for federal agencies [but 'patent quality' -- if it exists -- is such a Protean concept, particularly when viewed from outside the USPTO from the perspective of the owner, the investor, the industrial competitor or the licensee that one wonders if it wouldn't be better to concentrate on efficiencies on a de facto basis and ignore 'patent quality'. It's also worth pointing out that part of the examiner's task is to reject applications and that, if an examiner's output consists of 100% perfect gold-standard patents, he or she may be rejecting plenty of not-so-perfect but still valid ones]. 
  • USPTO has not comprehensively assessed the time examiners need to perform high quality patent examinations, including thorough prior art searches, and has not fully assessed the effects of other agency incentive policies on patent quality. For instance, USPTO recently adjusted the time allotted to examiners for reviewing applications in some technologies, but has not recently assessed the time needed for a thorough examination in all technology areas [we can't blame the USPTO here, since there is no simple equation that matches a specific technology to an allocation of time]. GAO estimates, based on its survey, that 70 percent of patent examiners say they do not have enough time to complete a thorough examination given a typical workload [naturally, since if most examiners said they had enough time they would suspect a shortening of this time in the name of operational efficiency, thus increasing workloads and stress]. Additionally, most stakeholders GAO interviewed said that the time pressures examiners face is one of the central challenges to ensuring patent quality; however, USPTO has not analyzed the effects of its production-based incentive policies on patent quality. According to federal standards for internal control, operational success requires providing personnel with the right incentives for the job. Without comprehensively assessing the time needed to conduct a thorough examination or USPTO's current incentives, USPTO cannot be assured that its time allotments and incentives support the agency's patent quality goal [it's ironical that the GAO is looking for incentives that lie outside the patent system as a means of boosting the through-put of applications for patents -- which are themselves incentives].
We all want an ideal world in which patents are a reliable indicator that something new has been properly divulged to the public in exchange for a limited-term exclusive right to control its use -- and it is plain to see that some patents should not have been granted at all, being obscure, lacking in subject matter or entirely covered by easily-discovered prior art.  We have a choice of seeking to define and aim at 'patent quality' or merely to rectify the mistakes that are made institutionally and by individual examiners and to seek to rectify them. In the fast-changing world of innovation protection and investment, can we be sure that the first approach is preferable to the second?

To access the full report, click here.

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