The PTO Paradox: A Gatekeeper Mired in the Past
|Written by John White
Patent Attorney - Berenato & White
PLI Patent Bar Review Lecturer
Posted: January 12, 2011 @ 7:30 am
Gene and I are true believers in the PTO and its mission. What this means, for me anyway, is that the PTO is given the benefit of the doubt for whatever it is they are attempting. I do not presume ill motives. We are mindful, however, that not everything is perfect about the PTO. Some rules and the implacable enforcement thereof, drive any sane practitioner to the edge. But, at the moment, the trends are favorable.
One ongoing trend, however, that defies resolution is what I call the PTO Paradox, which describes the nearly unbelievable scenario whereby the U.S. innovation agency (i.e., the PTO) is well behind the curve when it comes to technology solutions that can and do streamline massive, document intense review activities.
When I was an Examiner in the early to mid 1980’s, the PTO was relying on shallow wooden drawers (shoes) of hand annotated paper in dimly lit rooms as the primary search resource to support examination. The files consisted mostly of US patents, but some arts had considerable foreign reference materials and non-patent literature as well. Older experienced Examiners had their own private prior art digests. Contract human re-filers were employed to maintain the integrity of the search materials. A missing reference rate of around 7% was the order of the day.
In some areas of technology, chemical mostly, the PTO had a thing called a modem (300 baud!) attached to amazing databases that could, with training, be used on occasion. But, for the most part, the PTO in the 1980s operated as it had for the previous 150 years. The big change while I was there was the increasing use of “form paragraphs” and “word processing” to prep office actions. The really forward leaning examiners had typewriters and whiteout on their desks! And so it was, the insurmountable PTO Paradox, to wit: the gatekeeper of the technology of the future hopelessly mired in the technology of the past.
Has it changed? Yes and no. The filing of papers has changed considerably with the advent of EFS-Web. The search rooms are gone (as is much of the art unit camaraderie and cohesion), and examiners are confined to offices with little contact person to person for tips and help. The searching is done using Boolean operators and other basic search techniques. Examiners fight their way through a 100+ page specs and drawings, scan endless claims, and do the best they can. The problem is that the amount of reference materials to sift has exploded as the PTO has gone electronic (and applications are published). Since my Examiner time, around 2 more million patents have issued; an increase of around 50%. Now, add in published applications!
Sure, an Examiner can use scanning functions to find words and phrases in cited references and patch together an office action, but as a recipient of these many actions, oft times a mere careful read of the citation shows how out of context the cite is and how faulty the rejection is under any reading of KSR. Too often, it just doesn’t add up. But, I do not believe the Examiners intend to do a poor job, anymore than I intended to do a poor job when I was an Examiner. The fundamental problem is one of time and tools. Time varies art to art and grade level to grade level. It is never what any reasonable person would expect is the time that should be allotted to such a complicated review process, but that is the reality of life for Examiners at the Patent Office. But what about tools? Surely they must have gotten better, correct?
Sadly, the Patent Office does not have the latest and greatest search tools at their disposal, hence the PTO Paradox. The agency tasked with maintaining our repository of innovative endeavors, the agency responsible for reviewing those innovations to reward that which is unique with a patent, is hobbled by sub-par information infrastructures to the point where they must rely on Google to digitize information for free. See USPTO and Google to Make Patent & Trademark Data Public and PTO Lays Out Ambitions 2011 Agenda at IPO Conference. By any honest assessment the PTO, which should be the innovation leader, is using outdated technologies.
I believe it is time for the PTO to jump aboard the ship of the future and use document and data search techniques now being employed in the litigation and national security arenas. Many tools (software approaches) exist that multiply effort and get smarter with each go around. I believe these tools should have a place at the PTO. Search techniques that build on what others have done and that search not just publications, but file histories as well, would give examiners a leg up when trying to assess patentability and truly understand what references can and should be cited to demonstrate. Machine translation of foreign language art would also be very useful. The abstracts just do not provide enough for an Examiner to go on for foreign references. And, in many areas, foreign art is the best.
Sure the PTO needs to solve its mundane technology issues; moving applications in/out and round about. However, it also needs new technology and focus to solve problems that simply did not used to exist, but now occur routinely. The private sector is developing solutions and it is time for the PTO to be in step with those solutions instead of existing in the – PTO Paradox.