[Federal Register Volume 74, Number 235 (Wednesday, December 9, 2009)]
[Notices]
[Pages 65093-65100]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-29328]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2009-0054]
Request for Comments on Enhancement in the Quality of Patents
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO) has in
place procedures for measuring the quality of patent examination,
including the decision to grant a patent based on an application and of
other Office actions issued during the examination of the application.
The USPTO in conjunction with the Patent Public Advisory Committee
(PPAC) has undertaken a project related to overall patent quality. This
notice is one element in that endeavor. As part of this effort to
improve the quality of the overall patent examination and prosecution
process, to reduce patent application pendency, and to ensure that
granted patents are valid and provide clear notice, the USPTO would
like to focus, inter alia, on improving the process for obtaining the
best prior art, preparation of the initial application, and examination
and prosecution of the application. The USPTO is seeking public comment
directed to this focus with respect to methods that may be employed by
applicants and the USPTO to enhance the quality of issued patents, to
identify appropriate indicia of quality, and to establish metrics for
the measurement of the indicia. This notice is not directed to patent
law statutory change or substantive new rules. It is directed to the
shared responsibility of the USPTO and the public for improving quality
and reducing pendency within the
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existing statutory and regulatory framework.
Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before February 8, 2010. No public
hearing will be held.
ADDRESSES: Written comments should be sent by electronic mail message
over the Internet addressed to [email protected].
Comments may also be submitted by mail addressed to: Mail Stop
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450, marked to the attention of Kenneth M. Schor and Pinchus
M. Laufer. Although comments may be submitted by mail, the USPTO
prefers to receive comments via the Internet.
The written comments will be available for public inspection at the
Office of the Commissioner for Patents, located in Madison East, Tenth
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available
via the USPTO Internet Web site (address: http://www.uspto.gov).
Because comments will be made available for public inspection,
information that is not desired to be made public, such as an address
or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: By telephone: Pinchus M. Laufer, Legal
Advisor, at (571) 272-7726, or Kenneth M. Schor, Senior Legal Advisor,
at (571) 272-7710; by mail addressed to U.S. Patent and Trademark
Office, Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box
1450, Alexandria, VA 22313-1450, marked to the attention of Pinchus M.
Laufer and Kenneth M. Schor; or by electronic mail (e-mail) message
over the Internet addressed to [email protected] or
[email protected].
SUPPLEMENTARY INFORMATION: This notice is directed to the quality of
the examination and prosecution of patent applications in the USPTO and
the quality of patents resulting from that examination and prosecution.
I. Purpose of Notice
The USPTO is responsible for the granting and issuing of patents.
See 35 U.S.C. 2(a)(1). The USPTO examines patent applications to
determine whether an applicant is entitled to a patent under the law,
and issues a notice of allowance if, upon such examination, it appears
that the applicant is entitled to a patent. See 35 U.S.C. 131 and 151.
The USPTO examines applications for compliance with the applicable
statutes and regulations, and for patentability of the invention as
defined in the claims. See 37 CFR 1.104(a).
The USPTO is seeking to improve the quality of the examination of
patent applications and patents resulting from that examination.
A quality patent is defined, for purposes of this notice, as a
patent: (a) For which the record is clear that the application has
received a thorough and complete examination, addressing all issues on
the record, all examination having been done in a manner lending
confidence to the public and patent owner that the resulting patent is
most likely valid; (b) for which the protection granted is of proper
scope; and (c) which provides sufficiently clear notice to the public
as to what is protected by the claims. The present quality improvement
effort has, as one goal, reduction of overall application pendency and
is thus also directed towards identifying quality issues that give rise
to process inefficiencies. The term ``quality patent'' as used herein
does not include the economic value of the resulting patent, which is a
result of market conditions and not the patent process itself. Rather,
providing the strongest quality patent possible in the shortest time
permits making the best use of a patent, given any set of marketing
conditions.
Improvement of the quality can reliably be achieved by a four step
process:
(1) Identification of the key aspects of the examination process
that affect quality. These key aspects are the quality items--i.e.,
activities and actions carried out by the USPTO, by the applicant, or
by both;
(2) Identification of indicia of the presence (existence) of the
desired quality items;
(3) Establishment of a process that can meaningfully measure such
indicia (establishing the metrics that can measure the indicia); and
(4) Establishment/modification of policy and USPTO operations to
optimize successful performance of the quality items (activities and
actions carried out) to bring about desired improvements in patent
quality and reductions in patent application pendency.
The public is being requested to comment on items that affect
patent quality, as well as addressing patent process inefficiencies
with the aim of simultaneously improving patent quality while reducing
overall application pendency. It is preferred that comments be provided
in the manner set forth in the ``Public Comments Requested'' section of
this notice (which immediately follows this section) and address the
criteria for evaluating such comments set out below in Section III of
this notice. In this regard, the USPTO is seeking comments from the
public on improved methods of identifying indicia of existing quality
items, and additional metrics for the measurement of indicia of
existing quality items. Improvement to the monitoring of existing
quality items should include methods of more reliable and efficient
monitoring, as well as methods for making procedural changes based on
the results of the monitoring. The USPTO desires to assess whether
existing measures are reflective of the quality items they are designed
to measure, how these measures can be improved upon, whether other
measures could better assess the same quality items, and whether there
are other aspects more indicative of quality that can be readily
measured and used to improve quality and reduce application pendency.
The public is also being requested to comment on suggested quality
items of particular interest identified below in Section V of this
notice by which the examination process can be meaningfully enhanced,
or to suggest other key quality items; to identify appropriate indicia
of the enhancement of quality provided by the quality items; and to
establish metrics for the measurement of the indicia of enhancement.
These quality items of particular interest, which will be discussed
below, include (but are not limited to) identifying and analyzing the
best prior art and evidence bearing on patentability, facilitating the
presentation of the positions of the USPTO and the applicant to each
other, coming to a definitive resolution of the issues that are
presented which resolution is clearly stated, and presenting a clearly
identified scope of the patent coverage, to provide the strongest
quality patent possible in the shortest time.
II. Categories of Public Comments Requested
For ease of organization and analysis, the areas for which the
USPTO is requesting comment by way of this notice are divided into
specific categories. The categories for which public comments are
solicited are as follows:
Category 1--Quality measures used: The USPTO is specifically
requesting feedback on the quality measures that it is currently using
(described below in Section IV.A), and new measures that it may adopt
in the future. As to quality measures currently in place, the USPTO
desires to assess whether these
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measures are reflective of the quality items they are designed to
measure, whether these measures can be improved upon, whether other
measures could better assess the same quality items, and whether there
are other aspects more indicative of quality that can be readily
measured.
Additionally, areas in which the USPTO is particularly interested
are those of: (1) Finding the best prior art; (2) obtaining a
comprehensive initial application; (3) providing a comprehensive first
Office action on the merits including a clear explanation of all issues
raised; (4) obtaining a comprehensive and clear response to Office
actions on the merits; and (5) proper use of interviews. These are
discussed in Section V of this notice. The public is invited to comment
on those areas, including suggesting modifications of the USPTO's
suggestions. In addition, the public is invited to suggest other areas
of the process which are believed to have a significant bearing on
quality. Any such suggestions should be accompanied by an explanation
of the basis for the belief that the suggested area(s)/modification(s)
has/have a significant bearing on quality.
The USPTO is requesting that such feedback be provided in terms of
the following information:
A. Identification of the key items, i.e., the activities and
actions that are carried out by the USPTO, by the applicant, or by
both, that bear on quality. What is the nature of activity, action, or
conduct that increases quality, and why is it believed to do so?
B. Identification of indicia of the presence of the desired quality
items. How do the proposed indicia show that the desired activities and
actions were indeed carried out, and show the quality or effectiveness
of that activity performed by the USPTO and/or the applicant?
C. What metric(s) should the USPTO use to measure each indicium,
and what is the nexus between the measured indicium and the metric(s)
used (why is the existence of the indicium proved by the metric)? Based
on that nexus, why is the proposed metric believed to provide a
practical combination of reliability and efficiency?
Category 2--Stages of Monitoring: With a view toward reducing
patent pendency, the USPTO is considering the monitoring of quality at
each step, or at as many steps, in the patent application, prosecution,
and examination processes as is feasible, and monitoring of quality as
close in time to when the step whose quality is being measured is
performed as is feasible. The USPTO is specifically considering
monitoring quality at each of the following stages of the patent
application and examination process: (1) When the application is filed
in the USPTO; (2) when the initial search for the application has been
completed; (3) when the first Office action for the application has
been completed; (4) when an interview for the application has been
conducted; (5) when a reply to the first or any subsequent non-final
Office action has been filed; (6) when an Office action (non-final or
final) or notice of allowance in response to a reply to a non-final
Office action has been completed; (7) when an after-final submission
has been filed; and (8) when an appeal brief or other appeal-related
paper has been filed.
The USPTO is requesting comments on the choice of these stages, and
the practicality of measuring quality at each one of these stages. It
is requested that the public point out at what step or steps in the
patent application and examination process the USPTO should measure the
quality obtained by the identified activity, action, or conduct that
increases quality. While measuring quality at each stage may yield much
information, it seems credible that increasing quality of the
application in the early stages would be most effective in reducing
pendency, and the USPTO is seeking comment on this hypothesis.
The public is also invited to provide information on how quality is
affected by action taken in the above-identified eight stages, or in
other stages in the patent application process and to identify the
nature of activity, action, or conduct that increases quality in that
stage--such information would be included as ``other areas of the
process which are believed to have a significant bearing on quality''
in the comments responding to Category (1) of this section. Also
included would be how the USPTO should measure the quality obtained at
each such step, and the nexus between the targeted quality aspect and
the measured indicia of the activity, action, or conduct that increases
quality in that stage.
Feedback from the USPTO: In connection with this category, the
USPTO is also requesting input on the timing of the USPTO's assessment
and reporting of various measures of quality in relation to the stages
of monitoring. For example, should the USPTO await final disposition of
the application before reporting on the quality measure obtained for
that application? Or, would there be a practical, cost-effective way
for the USPTO to report quality measures, during certain identified
stages in the proceeding to be identified in the comments (with an
explanation of why it would be practical and cost-effective)?
Category 3--Pendency: The USPTO is also requesting comments on
whether the quality of the prosecution and examination of the
application and quality of the resultant patent can be improved at the
same time as reducing the overall pendency of an application. This
category also includes input on how the use of continuing applications
(continuations, voluntary divisional applications) has affected overall
pendency and quality. For example, where specific claims are allowed in
a given application, does the filing of a continuation application to
address the broader rejected claims add to or detract from the quality
of prosecution and examination of the applications and the quality of
the resultant patents?
Category 4--Pilot Programs: The USPTO is interested in receiving
feedback regarding the effect on patent quality and examination quality
resulting from various pilot programs (e.g., Peer-to-Patent, Pre-Appeal
Brief Conference Pilot, First Action Interview Pilot, Continuing
Education for Practitioners (CEP) Pilot) either expired or currently in
effect. This quality effort does not include at this time providing
selection options for different examination procedures such as deferred
examination. Input as to what metrics could be used to measure
enhancements of quality due to any of these pilot programs is also
solicited.
Category 5--Customer Surveys Regarding Quality: The USPTO is
requesting feedback on past USPTO surveys of the patent community and
proposed modifications for future surveys. In 2006 the USPTO launched
the Customer Panel Quality Survey (CPQS). The survey is designed to
capture input from the USPTO's frequent customers regarding key
examination quality issues and to provide customers with a mechanism to
suggest critical training needs and areas on which the USPTO should
focus in terms of quality improvement. The survey is also designed to
assist the USPTO in monitoring changes in patent examination quality
between survey periods.
The USPTO partners with an independent research firm to administer
the CPQS. The survey has been administered in regular survey periods or
``waves'' on a roughly quarterly basis from fiscal year 2006 through
fiscal year 2009. The target population for the survey is a panel of
patent customers who have had the most interaction with the USPTO over
the past year. Top filers are defined as law firms, organizations, or
individual inventors who have
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submitted six or more patent applications in the previous year. The
survey uses a rotating panel survey design; customers are asked to
participate in two consecutive survey periods in order to provide valid
trend comparisons between survey periods. On average, there have been
about 1,100 respondents per survey period. Survey results are analyzed
on a quarterly basis to assist USPTO in developing data-driven
improvement strategies on topics related to examination quality.
The USPTO is interested in comments regarding survey composition
and methodology, such as questions, format, and population. Comments as
to how survey results can be more effectively used to enhance quality
are also solicited.
Category 6--Tools for Achieving Objectives: The USPTO is requesting
identification of existing tools which are, or can be made, available
to users and the USPTO to enhance the quality of the USPTO's processes.
Such would include, for example, software tools that will provide
meaningful monitoring, search tools, claim analysis tools, and case law
identification tools. In addition, the USPTO is interested in data
mining tools to help monitor its quality items and other useful
statistics.
Category 7--Incentives: The USPTO is requesting comments on means
to incentivize applicants and USPTO personnel to adopt procedures and
practices that support the achievement of patent quality. It is
recognized that any additional effort to increase the quality of the
product has an associated cost.
The criteria used to evaluate comments and proposals are set out
below in section III which immediately follows. Comments should
consider these criteria and address them as best possible to enhance
the value and impact of any proposals and comments.
III. Criteria for Evaluating Comments and Proposals
Public input which is received will be evaluated in terms of:
(a) The feasibility of implementation of each proposed enhancement;
(b) The relative value of the proposed enhancement--
1. Will it affect a statistically significant number of cases, as
compared to other suggestions?
2. Will there be any negative consequences of proposed enhancement
to the USPTO and practitioners that could outweigh the benefits of it
implementation?
3. Will cost/expenditure in USPTO resources outweigh the benefits
of it implementation?
(c) The ability to provide clear indicia of successful quality
enhancement, and metrics that will meaningfully measure the results of
such enhancement--
1. Are there associated metrics that accurately reflect the
indicia?
2. Are there indicators associated with the metric that are capable
of accurately reflecting meaningful progress?
3. Do the indicia and metrics reflect a behavior that can, in
response to its being tracked, affect a statistically significant
number of cases or apply only to certain technologies?
(d) Practicality of implementing a process to obtain data
reflecting the indicia, including--
1. Will cost/expenditure in USPTO resources be too much or how
should it otherwise be paid for?
2. Will the tracking of the metric require major overhaul of USPTO
internal process in order to gather the appropriate data?
3. Will there be any negative consequences of using the indicia or
its metrics to the USPTO and practitioners (e.g., chilling effect on
other actions taken) that could outweigh the benefits of it use?
IV. Background for the Requested Information
A. Quality Monitoring: The Office of Patent Quality Assurance
(OPQA) conducts in-depth reviews of examiner work products, evaluates
findings, and assists the Patent Examining Corps in the development and
implementation of quality improvement initiatives. The OPQA reviews are
currently used to generate the official USPTO examination quality
metrics.
Prior to fiscal year 2005, the USPTO official quality metric was
directed to only the final output of the examination process--an
allowed application. Since fiscal 2005, OPQA's quality review focus was
expanded to encompass all substantive actions within the USPTO's
control in the patent process, namely, the quality of the decision to
allow an application and the quality of the Office actions issued
during the course of examination of an application.
From fiscal years 2005 through 2009, the USPTO employed two
official metrics of examination quality: (1) The Allowance Compliance
Rate; and (2) the In-Process Review (IPR) Compliance Rate. In fiscal
year 2010 the USPTO has modified the official metrics to report (1)
Final Action/Allowance Compliance Rate; and (2) IPR Compliance Rate for
non-final Office actions.
(1) Allowance Compliance Review: Allowance Compliance is determined
by performing a review of a randomly selected sample of allowed
applications drawn from all Technology Centers. The reviews are
conducted on applications after a notice of allowance has been mailed
in an application but prior to patent grant. The focus of this review
is on the examiner's decision to allow the application. If any allowed
claim is found to be unpatentable for any reason provided in the patent
laws, the allowance of the application is considered to be in error. In
addition to the assessment of the patentability determination for the
claims, the record is reviewed for completeness and clarity and to
ensure compliance with procedural and formal matters. The review also
evaluates the quality of the examiner's search.
(2) In-Process Review: IPR Compliance is determined by performing a
review of a randomly selected sample of applications containing Office
actions issued prior to allowance or appeal of an application, drawn
from all Technology Centers. The focus of this review is on indicators
of quality that were determined on the basis of feedback from patent
practitioners obtained prior to the development of the IPR program and
includes, but is not limited to, determining: (1) Whether the
rejections made in the Office action are proper; (2) whether the Office
action fails to include rejections that would have been appropriate;
(3) whether the examiner has responded to all matters of substance in
the applicant's reply; (4) whether the examiner has clearly set forth
his or her reasoning; (5) the propriety of the finality of a final
Office action (where applicable); (6) the propriety of any restriction
requirement; (7) the quality of the search; and (8) the propriety of
the examiner's handling of formal matters. If there is a clearly
erroneous action on the part of the examiner that would cause the
applicant or USPTO unnecessary rework or expense in the examination
process (such as a clearly erroneous rejection of a claim, failing to
include an appropriate rejection where institution of the rejection
would necessitate an additional Office action, failure to substantively
treat applicant's reply, or improperly making an action final), the
action is considered to be an error.
B. Quality Reporting: Fiscal years 2005-2009: As pointed out above,
from fiscal years 2005 through 2009, the two official metrics of
examination quality used by the USPTO were the Allowance Compliance
Rate and the In-Process Review (IPR) Compliance Rate.
The IPR Compliance Rate encompassed both non-final and final Office
actions. The IPR Compliance Rate was determined on the basis of a
review
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of a randomly selected sample of both non-final and final Office
actions; in FY 2009, the sample size was 3,199, with approximately two
non-final actions reviewed for every final action reviewed. The IPR
Compliance Rate was defined as the percentage of reviewed applications
in which no clearly erroneous action was found.
The Allowance Compliance Rate was a stand-alone review, limited to
allowed applications. The Allowance Compliance Rate was determined on
the basis of a review of a randomly selected sample of allowed
applications. In FY 2009, the sample size was 4,588; thus,
approximately three allowances were reviewed for every IPR Compliance
Rate action reviewed. The Allowance Compliance Rate was defined as the
percentage of applications undergoing Allowance Compliance Review whose
allowance was not considered to be in error.
Fiscal year 2010: For fiscal year 2010, the In-Process Review
compliance rate has been redefined to include only non-final Office
actions, and the metric is designated as the ``Non-Final In-Process
Compliance Rate.'' In FY 2010 approximately three out of five (58.4%)
of all reviews (finals, allowances, and non-finals) will be of non-
final actions. Also, final Office actions are now grouped with
allowances, to provide a new metric--the ``Final Action/Allowance
Compliance Rate.'' In FY 2010, an approximately equal number of
allowances (19.4%) and final rejections (22.3%) will be reviewed.
Note that, the new sampling ratios and groupings shift the emphasis
of the USPTO quality review process towards the earlier stages of
prosecution by emphasizing non-final Office actions. It is believed
that an emphasis on the quality of initial actions can do much toward
reducing overall application pendency, by identifying weaknesses in the
examination process that may have escaped scrutiny by the prior
emphasis on allowance compliance.
The Final Rejection/Allowance Compliance Rate is determined on the
basis of a review of a randomly selected sample (2,793 for FY 2010) of
allowed applications and finally rejected applications. An allowed
application is considered to be compliant if it is free from error as
defined by the criteria set forth above in Section IV.A(1) titled
``Allowance Compliance Review.'' A final Office action is considered to
be compliant if it is free from error as defined by the criteria set
forth above in Section IV.A(2) titled ``In-Process Review.'' The Final
Action/Allowance Compliance Rate is defined as the percentage of
applications undergoing Final Action/Allowance Compliance Review for
which no deficiency is found with respect to the examiners' final
determination concerning the patentability of the claims.
The Non-Final In-Process Compliance Rate is determined on the basis
of a review of a randomly selected sample of non-final Office actions
(3,914 for FY 2010). An Office action is considered to be compliant if
it is free from error as defined by the criteria set forth above in
Section IV.A(2) titled ``In-Process Review.'' The Non-Final In-Process
Compliance Rate is the percentage of non-final actions reviewed in
which no examination deficiency is found.
Information obtained through the various reviews will be analyzed
to identify trends in examination quality, areas where improvement is
needed, and strategies for gaining improvements.
C. Quality Index Ranking (QIR): In fiscal year 2010, the USPTO will
be using internal statistical measures to identify outliers and other
anomalies in processing and examination.
QIR involves obtaining data from the PALM internal USPTO tracking
system on items such as multiple non-final actions, restrictions (after
first action, or multiple, sequential or late in prosecution),
reopening of prosecution after the filing of an appeal brief, reopening
of prosecution after a final rejection, first action allowances,
multiple requests for continued examination (RCE) made in a single
application, and allowances after RCE filing without any substantive
amendment. The data are analyzed to identify outlier populations--i.e.,
individuals or populations for which there is a frequency of any of
these data points that is significantly different from the norm for a
particular cohort. Such outliers may signal the presence of quality or
procedural issues that need to be addressed (or conversely, in some
instances they may indicate superior examination practices, from which
best practices could be identified and shared).
A quality initiative for fiscal year 2010 is for the USPTO to
perform reviews of Office actions for the purpose of providing
individual examiner feedback and training. These reviews will be in
addition to the statistical reviews performed by OPQA and those
normally performed within the Technology Centers; these additional
reviews will be conducted by a combination of OPQA Review Quality
Assurance Specialists and Technology Center managers. Applications will
be selected for review on the basis of statistical analysis of
prosecution parameters identified as being probable indicators of
procedural or examination practices that are in need of improvement,
such as those that are enumerated in the paragraph above. Such review
findings will be used for the purpose of providing one-on-one examiner
feedback, and for developing broader training initiatives where such
needs are identified. Follow-up reviews and/or analysis will be
conducted subsequent to feedback and training, in order to assess
effectiveness of the feedback loop. At the time of drafting of this
Request, the sample size for these reviews has not been finalized.
D. Looking to the Future in Quality Monitoring: The USPTO has, in
the past, reviewed quality studies obtained from the public and those
generated internally, and it has included the input from such studies
in its effort to continually improve the quality examination process.
Recently, however, the USPTO has received feedback that its current
quality measures do not accurately measure the quality of patents
issued by the USPTO or the quality of the USPTO's examination process.
In addition, the USPTO has received feedback that some measures it has
taken to improve the quality of the patents it issues have resulted in
prolonging the prosecution of applications. The USPTO is continually
seeking ways to improve the quality of its examination of patents, to
improve the means used to measure that quality, and to reduce
application pendency. Thus, the USPTO is seeking public input (as above
requested in Section II of this notice) on the best ways to improve
quality, measure that improvement, without extending the examination/
prosecution process, and in fact to shorten the process. It is
preferred that the improvements proposed should be directed to (a) ways
of identifying and analyzing the best prior art and evidence bearing on
patentability and presenting that information ``up front,'' (b) a clear
presentation of the positions of the USPTO and the applicant to each
other at each stage of the process, and (c) coming to and clearly
stating a definitive resolution of the issues that are presented, and
clearly identifying the scope of the patent coverage. Comments that
focus on specific issues which apply to certain technologies are also
solicited.
V. Some Specific Areas of Particular USPTO Interest
Enhancement of the process and its quality, as well as monitoring
of same, are best accomplished when process changes are a product of
input from the USPTO and from the public. In that
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context, and in the interest of making this request for comments more
focused for subsequent action, five specific areas in which the USPTO
is particularly interested in receiving comments will now be discussed.
The completeness and quality of action taken in these areas prepares
the application for an efficient and reliable conclusion in its
evaluation, and furthers the goal of providing valid patents.
This notice makes no representation that these five specific areas
are the only areas where quality can be improved. The USPTO welcomes
any further suggestions to address the details of improving quality in
the five areas specifically identified below, as well as suggestions to
address any other specific areas of concern which may be included in
this or follow-up quality improvement efforts.
1. Prior Art: Recognizing the essential need for having the best
prior art before a patent examiner during the initial examination of a
patent application to the quality of the examiner's decision on the
patentability of the invention as defined in the claims and the
ultimate validity of a granted patent, the USPTO provides specific
instructions to examiners for identifying the most pertinent prior art
for an application. These instructions are designed to furnish patent
examiners with sufficient information to make appropriate novelty and
nonobviousness determinations.
Examiners are instructed to conduct ``a thorough investigation of
the available prior art relating to the subject matter of the claimed
invention.'' See 37 CFR 1.104(a). More specifically, the Manual of
Patent Examining Procedure (MPEP) instructs examiners that prior art
searches are to include not only the field in which the invention is
classified, but also analogous arts. See MPEP Sec. 904.01(c) (8th ed.
2001) (Rev. 7, July 2008).
To assist examiners in obtaining the best prior art, the USPTO has
invested a substantial amount of resources in the search and retrieval
of a wide variety of prior art documents. Patent examiners can readily
search classified files, microfilm, and CD-ROMs, comprising United
States patents, foreign patent documents, Patent Cooperation Treaty
(PCT) publications, as well as a large selection of non-patent
literature, including technical journals, books, magazines,
encyclopedias, product catalogues, and industry newsletters. In
addition, patent examiners have access to in-house and commercial on-
line databases providing convenient access, from their desktop, to
millions of United States and foreign patent and non-patent literature
documents. Furthermore, all patent examiners have access to the
Internet to search relevant Web sites for prior art.
The most rapidly changing technologies, for example, in the
telecommunications and the computer-related arts, present challenges in
searching and identifying the most relevant prior art. This is because
often the best prior art with respect to these emerging technologies is
available as non-patent literature months to years before it is
available in the form of United States or foreign patents. Accordingly,
searching the non-patent literature in rapidly changing technologies is
vital to the quality of the patentability determination. To ensure
complete coverage, the USPTO is working on assembling a larger, more
complete non-patent literature prior art collection in emerging
technologies and is working on providing patent examiners with better
access to non-patent literature in new areas of technology, as new
areas continue to emerge.
In addition to the prior art uncovered during the search conducted
by the examiner, applicants have a duty to submit all information known
to them to be material to patentability of the claims. See 37 CFR 1.56.
Applicants are also encouraged to review certain types of information,
e.g., prior art cited in search reports of a foreign patent office in a
counterpart application, to ensure that material information is
disclosed to the USPTO. See 37 CFR 1.56(a)(1) and (a)(2). It is also
helpful for applicants to perform a search on the disclosed invention
prior to drafting claims for presentation for examination. This
applicant contribution is important to high quality patent examination
because inventors often are in the best position to be aware of the
state of the art and are in possession of, or have access to, the most
pertinent prior art. The quality of patent examination increases when
applicants assist the examiners in identifying prior art information,
particularly non-patent literature, which is material to patentability.
This is especially so when the information is identified to the USPTO
as early as possible in the examination process, so that issues can be
clarified, defined and resolved at an early stage in the examination
process.
Given the above, comments are being solicited to improve upon the
performance of the USPTO in identifying relevant prior art. In this
regard, the USPTO would like to address the difficulties involved in
locating the best prior art, and any perception that the best art is
not being found with particularity regarding gaps in certain technology
areas. Comments are also being solicited regarding search techniques
and procedures which can improve the success of identifying relevant
prior art, as well as how the parties' efforts in bringing this about
can be better achieved and measured. Comments are further being
solicited on how the success of identifying relevant prior art can be
measured, as well as how the parties' efforts in bringing this about
can be measured.
2. Comprehensive Initial Application: The patent acquisition
process is best streamlined when the applicant presents a comprehensive
initial application. It is suggested that such an application could
include the following elements:
Applicant's representative practitioner would present a reasonable
number of claims upon filing that cover the broadest and narrowest
claim coverage the application clearly supports under 35 U.S.C. 112 and
the applicant is willing to accept. The claims would be drafted taking
into consideration the relevant prior art and evidence available, and
the closest prior art (e.g., 5-10 most relevant references) and
evidence would be presented to the USPTO as early as possible.
Applicant's representative practitioner would present a clear and
complete specification that provides clear written description and
support that provides antecedent basis for all claim language. The
specification would be readily understandable, with terms or phrases
that are not clearly defined in the state of the art having special
definitions so that the applicant, examiner, and the public share a
common understanding of the scope of the specification and claims.
Comments are being solicited as to the various aspects of the
initial application. In addition, input is sought as to what guidelines
the USPTO can disseminate, to best assist applicants in preparing
applications in a manner that the USPTO can most efficiently and
completely examine the applications; and how the completeness of filed
applications can be measured. In particular, the USPTO is interested in
suggestions as to what features of an initial filing can be used as
indicia of the quality and completeness of the submitted application
and how to measure the effect these indicia have on pendency of the
application and quality of the final result.
3. Comprehensive First Office Action on Merits, With Clear
Explanation of All Issues: After reviewing the entire specification in
detail, the examiner construes the claims and searches the disclosed
invention defined by the
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claims as construed. The examiner then reviews the entire application
for compliance with all the relevant statutory and regulatory
requirements, and communicates his/her findings to the applicant in an
Office action on the merits. The examiner provides a clear explanation
of all issues in the Office action. See 37 CFR 1.104(a).
A comprehensive initial Office action (which is geared toward
eliciting a comprehensive response from applicant) is important to
streamline the effective resolution of issues between applicant and
examiner. It is suggested that initial Office action could include the
following. When warranted, the examiner may explain in the Office
action the examiner's claim construction as compared with the scope of
the disclosed invention, and how the prior art is being applied to the
claims. In those instances, the examiner would explain how the prior
art is applied against the claims given their broadest reasonable claim
construction, as that construction was explained by the examiner. The
examiner would also apply the prior art to the claims, as they may be
interpreted in light of the specification. The examiner would point out
any issues of claim clarity and support for the claims (as well as any
other statutory or formality deficiency in the claims and disclosure as
a whole), and how to address the issues, as appropriate.
It is contemplated that examiners be explicitly instructed not to
always rely solely on form paragraphs, and to modify any form paragraph
used, when such is appropriate to a given situation. In general, when
using a form paragraph, the examiner should be familiar with any
statutory, regulatory, and case law cited in the form paragraph and
discuss it in detail as it applies to the specific facts of the case.
It is also contemplated that the Office action would be structured
to not only clearly define the issues that are raised, but also to
explain any subtleties that an applicant might not recognize. Likewise,
the action would not only respond to all points made by applicant, but
also would address applicant's assumed logic on which those points were
based. Finally, the action would provide suggestions to resolve any
issues, whether clearly raised or not, that the examiner believes can
and should be resolved, to facilitate the process and resolve issues at
the earliest point possible.
Comments are being solicited as to the aspects of the initial
Office action that will enhance quality, how one can measure the
particular suggestions, whether any aspect of the suggestions should be
mandatory or be otherwise procedurally handled, and further addresses
the cost impact and how and whether any resultant additional costs to
the system of implementing the suggestions can be dealt with or whether
the costs exceed the perceived benefits. Comments are also solicited as
to how examiners can best communicate the information discussed above,
to best assist applicants in responding to Office actions; and how the
success of that communication can be measured.
4. Comprehensive and Clear Response to Office Action on the Merits:
Following the Office action, the process is most efficiently advanced
when the applicant's response presents all the information at
applicant's disposal bearing on the patentability of the claims and
desired issuance of a patent. It is desirable that the response place
the application in a position where applicant has addressed all the
examiner's points as well as all of applicant's needs, while at the
same time preparing the application for final resolution of the issues.
It is suggested that the response include the following elements.
In responding to the Office action, applicant would address the
examiner's explanation of claim construction to the extent it is given,
including explaining any disagreement between the USPTO and applicant
as to the claim construction. After reading the USPTO's position in the
Office action, applicant would provide all needed independent and
dependent claims to cover all aspects of coverage desired--prior to the
need for a final Office action; this set of claims should include
claims that would result in the coverage desired should the examiner's
claim construction be adopted (i.e., define patentability over the
examiner's claim construction and the examiner's overall position).
Applicant would not assume that arguments directed to independent
claims will be persuasive, but rather would also argue all meaningful
dependent claims individually and explicitly point out which
limitations define patentability, and which do not. Also, all evidence
to address the examiner's position would be presented as early as
possible and before final Office action; it should not to be assumed
that if applicant's arguments are not accepted, the evidence can later
be presented.
Comments are being solicited as to the various aspects of the above
suggested response. In addition, comments are being sought as to what
guidelines the USPTO can disseminate to best assist applicants in
preparing responses in a manner that the USPTO can most efficiently and
completely resolve issues, and bring the examination of the application
to a rapid, yet comprehensive, conclusion; and how the success of this
can be measured.
5. Proper Use of Interviews: It is highly desirable that the
examiner encourages, and is prepared to conduct, an interview whenever
it will facilitate resolving ambiguities and issues, or will otherwise
allow for a more effective examination.
As to applicant's role, it is suggested that (to obtain maximum
benefit from the interview) whenever the practitioner requires
clarification of a USPTO position, the practitioner have an interview
on the application prior to submitting the response and after comments
on Office actions have been received from the client. Before an
interview, the practitioner would provide the examiner with an agenda
for the interview, including copies of any proposed amendments,
exhibits, or other information that would be beneficial to review in
advance.
After the interview, both the examiner and applicant would
independently set forth in detail what took place at the interview (as
required by current procedure). Prior art, and other information/
evidence discussed would be specifically identified and the points
regarding the claim limitations and/or the disclosure and teachings of
the references would be made part of the record. The response to the
outstanding Office action would make reference to the points noted in
the practitioner's interview summary. Likewise, the response would also
address the examiner's interview summary, if it is already of record;
if there is conflict with attorney's summary, that conflict can be
explicitly noted and clarified as needed.
Comments are being solicited on how to improve upon interview
practice, to resolve issues at the interview, and to make the full
substance of the interview of record; and how the effectiveness of the
interview, as well as the completeness of its recorded summary, can be
measured.
VI. Guidelines for Written Comments
Written comments should include the following information: (1) The
name and affiliation of the individual responding; and (2) an
indication of whether comments offered represent views of the
respondent's organization or are the respondent's personal views.
As discussed previously, the USPTO prefers to receive comments via
the Internet. Information provided in response to this request for
comments will be made part of a public record and
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may be available via the Internet. In view of this, parties should not
submit information that they do not wish to be publicly disclosed or
made electronically accessible. Parties who would like to rely on
confidential information to illustrate a point are requested to
summarize or otherwise submit the information in a way that will permit
its public disclosure.
Dated: November 30, 2009.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. E9-29328 Filed 12-8-09; 8:45 am]
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