Reform Suggestions for the Patent Office

I hope and dream of the day when we get leadership at the PTO that will try and solve problems and reach out to the Patent Bar and see us as a part of the solution instead of the problem.  But as I said in my post yesterday on 7 reform suggestions for Congress, I doubt any of these will be implemented or even considered.  Nevertheless, without further ado I suggest the Patent Office revise the Examiner quota system, retain employees, implement real quality control, move to a fee for service model and revise examiner training.

1. Revise the Examiner Quota System

The Patent Office needs to substantially revise the Examiner quota system to prevent Examiners from gaming the system and to give Examiners enough time to appropriately work on applications so that a determination can actually be made whether there is any patentable subject matter that ought to be protected.  It is well known that a significant number of Examiners abuse the entire process in order to make their numbers. Who can blame them really though. If Examiners do not meet their quota on a quarterly basis they do not receive a bonus and if they miss their quota twice they are fired. Self preservation being an overwhelmingly understandable pursuit, it is hardly surprising that Examiners do things that lead to them getting more pay and keeping their jobs. Wouldn’t you do the same thing? Of course you would and it is impossible to understand why those within the Patent Office can’t understand that they are sending the exact wrong message to Examiners with an out-dated quota system that rewards gaming. This gaming leads to the unnecessary filing of a continuation or Request for Continued Examination, all for the purpose of disposing one case and then getting an easy clearance and quota mark toward satisfying their bonus requirements.

While I have criticized Undersecretary Jon Dudas almost non-stop for the last 18 months, he is right when he says the Patent Office ought not to have to reexamine applications they have already examined. The trouble is that he and others in senior management positions refuse to acknowledge that this duplicative work is frequently required because examiners are gaming the quota system and/or because they cling to ridiculous rejections. This has to stop. I do not blame the Examiners for finding out ways to manipulate the system, the blame lies squarely on PTO administration. This is a problem that predates the Dudas Administration, but absolutely needs to be solved by the next Director of the PTO.

2. Retain Employees and Implement Quality Control

Of course those in the Patent Office are going to look at this heading and become apoplectic. You see, they actually think they have a good quality control plan in place, but those of us in the industry know that is simply not true. The fact that the Patent Office could even for a moment think that what comes out is acceptable quality demonstrates that senior level management are like the Emperor with no clothes. In reality, they are worse than that clueless, mythical character because no one was willing to tell the Emperor he wasn’t wearing any clothes. I have been shouting it for several years, along with many other bloggers and critics. It is impossible for any senior level management to think for a moment they are wearing clothes! Nevertheless, they still cling to bureaucratic measures of success and quality as if all that matters is being able to publish an annual report that allows them to say they hit their goals. Never mind that the goals have nothing to do with a working or improving patent system.

Not only would I do away with a quota system, but I would implement a quality based bonus and retention plan that stops the brain drain and focuses on whether Examiners are issuing patents when they should and rejecting applications without any merit. The problem the Patent Office needs to keep good employees and it needs to care about true quality, not phantom quality that hardly looks for errors and focuses on keeping allowance rates low. Newsflash… 35 USC 102 says that the applicant shall be entitled to a patent unless. That means that the presumption is a patent ought to issue, so keeping allowance rates low and saying that is any kind of measure of quality is ridiculous and intellectually insulting.

If all you are doing is a cursory quality review then of course everything looks good. Most things look good on the surface, but that is not the true measure of quality. Quality inspectors should be given as much time as necessary to review the files they need. Doing a cursory review does absolutely nothing for quality, and in fact causes more problems than would exist without any quality review. Once it is known that only cursory quality review is conducted it becomes easy for intelligent people to figure out how to make everything they do pass that initial quick look inspection, which is what is going on as we speak. We would be far better off reviewing fewer cases and really reviewing them to understand the errors that are being made and address them accordingly. With a detailed analysis of errors the entire Examining Corps would improve because others could learn from mistakes made by their peers. To think that mistakes being made by one Examiner are isolated is ridiculous. They all have the same tools, same techniques and the same training. Quality review needs to be a tool to foster improvement, not a sword to financially punish those who make mistakes.

3. Move to a Fee for Service Model

From what I have been told by many retired PTO employees is that the Patent Office does not believe we have a fee for service model and they will resist all efforts to implement a true fee for service model. Nevertheless, the Patent Office charges greater fees for large applications, more claims, multiple dependent claims, extensions of time and more. You name it and the Patent Office charges for it. In the Patent Bar Review Course I teach I jokingly tell students that they ought to spend time remembering what can be done for free rather than remembering what requires a fee. The Patent Bar doesn’t test on what the fee is, just what requires a fee, and virtually anything and everything you can or need to do at the Patent Office requires the payment of a fee by the applicant. The ala carte system of fees is even a bit ridiculous, particularly when they change them insignificantly up or down every 6 months.

The Patent Office view is that because 70% of their funding comes from maintenance fees they do not have a fee for service model. Moreover, every application gets the same consideration, which is very egalitarian. Unfortunately, for better or worse nothing in the U.S. legal system is egalitarian, and the patent system is not egalitarian either. The more money you have the better representation you get, the better patent you get and there is just nothing that can or should be done to change that.  If the Patent Office needs to provide more time to examiners and hire more examiners and the way to do this is to charge a fair price for the amount of work that is required by an application.

4. Reform Examiner Training

Currently Examiner training is conducted over an 8 month period. For the life of me I can’t imagine what is taught to the Examiners for 8 months. I have taught patent law, patent application drafting and patent bar review for years. I believe I have a functional knowledge of the MPEP on par with anyone, save perhaps John White. Notwithstanding, I would be hard pressed to put together an initial training curriculum that is any longer than 3 or 4 weeks. There is only so much you can learn in a classroom. By its very nature what we do as patent attorneys and what Examiners do when they review our applications is work with inventions that are supposedly new and not obvious. How could you ever hope to train someone if all they do is learn in a classroom? Does the PTO actually think it is possible to teach new Examiners every possible thing they will see once they leave training?

What needs to happen is that each Examiner must start out by going through a comprehensive, but not exhaustive, training program. They should then be assigned to appropriate art units and for a period of time, perhaps another several weeks, and work elbow to elbow with experienced examiners in their own art unit. They would not work so much as they would watch and learn, like an apprentice. They also would not be assigned to only one Examiner trainer, but rather would spend 1 week at the elbow of one Examiner and then another week at the elbow of another Examiner. This would give perspective and teach them how thing are supposed to be done. Thereafter they would be given work and off to the races. After 6 months the rookie Examiner would then go back to training for another 2 or 3 weeks, with such training relating to advanced issues, focusing on issues peculiar to the art unit they are operating in.

I suspect the PTO will say that this elbow to elbow training is not practical given the number of examiners they hire annually. That is probably true if you are going to force yourself to work within the confines of systems and structures that are already in place, and which by the way have proven to be unworkable. What I see though is that every day there are good, knowledgeable, experienced Examiners who retire. These Examiners retire for a variety of reasons, but most that I know of want to stay involved at least on some level with the patent industry, whether it be as a part-time searcher, working in the Inventors Assistance area at the USPTO or doing work as a patent agent. These folks retiring are not the problem, they are the solution. They are from an era when Examiners were professionals who really cared about quality. They are a resource that ought to be used on a part-time, contract basis. They can retire, but those who want to stay involved could be used to work real cases and sit elbow to elbow with new, young Examiners.