Is there a Systematic Denial of Due Process at the USPTO?
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
Follow Gene on Twitter @IPWatchdog
Posted: Feb 26, 2012 @ 7:30 am
Art 4Last week I spoke at the 6th Annual Patent Law Institute hosted by the Practising Law Institute. The topic of my presentation was largely a “dealer’s choice” if you will, with the segment being billed as PLI Authors: Hot Topics in Patent Prosecution. I spoke at the New York City location and Jeffrey Sheldon, author of How to Write a Patent Application. With me being able to pick whatever prosecution topic I wanted, I decided to focus on Track 1 as a strategy to deal with Art Units where patents seem to go to die, which allowed me to discuss what I was finding from PatentCore relative to the Art Units that handle business method patents. See Business Methods by the Numbers and Appealed Patent Allowances.
After my presentation, as you might expect, I was approached by a number of patent attorneys. Story after story it was the same thing I have heard from so many others — depressing tales of not being able to get a patent. One particularly egregious thing I heard was from a patent attorney who told me about a conversation he recently had with a SPE from one of the business method art units. I don’t know which Art Unit, and frankly I didn’t ask, although it is probably easy enough to narrow down the Art Unit. This patent attorney told me that the SPE said: “we just don’t issue patents unless the Board orders us to.” If that is in fact what was said and is in fact what is happening then there is a systematic denial of due process at the United States Patent and Trademark Office, and that is wholly unacceptable.
Another thing I heard from a different attorney was that a patent examiner he recently spoke with told him: “no one wants to be the one to issue the 1-click patent.” The reference is, of course, to the patent obtained by Amazon.com on the 1-click functionality. The claims of the 1-click patent were found to be invalid, and it seems that there is fear within the patent examiner ranks. I can understand that, but that is not a reason to deny patents. The law presumes the applicant is entitled to a patent, saying that the applicant is entitled to a patent unless there is a valid reason to reject. In order to not allow patents bogus rejections are frequently put forth. This type of behavior does seems systematic in certain areas within the Patent Office.
Before going any farther allow me to update my earlier posted — Business Methods by the Numbers. In that article I said that there were 10 Art Units assigned to business methods, which is what I found to be the case as I was searching through the Patent Office webpages explaining which Art Units have responsibility for patents in class 705. That turns out to be erroneous. I received an anonymous tip almost immediately telling me that there are actually 20 Art Units that are assigned to business method patents, but I couldn’t confirm that independently or find out which Art Units until just the other day. There are indeed 20 Art Units assigned to business method patents. See Technology Center 3600 List of Contacts.
Armed with this information I went into PatentCore to find out what the allowance rates and appeals rates are. The table below is from data collected on Wednesday, February 22, 2012.
|Art Unit||Allow||Aband.||Allow %||After Brief||Brief %||After BPAI||Reversal %|
|3621||534||742||41.8%||118 of 534||22.1%||29 of 118||24.5%|
|3622||56||946||5.9%||8 of 56||14.3%||7 of 11||63.6%|
|3623||304||853||26.3%||13 of 304||4.3%||13 of 15||86.7%|
|3624||222||458||32.6%||18 of 222||8.1%||6 of 26||23.1%|
|3625||582||871||40.0%||75 of 582||12.9%||36 of 106||34.0%|
|3626||173||858||16.8%||20 of 173||11.6%||12 of 24||50.0%|
|3627||471||1091||30.2%||68 of 471||14.4%||27 of 101||26.7%|
|3628||284||634||30.9%||51 of 284||18.0%||28 of 65||43.1%|
|3629||271||962||22.0%||28 of 271||10.3%||17 of 46||37.0%|
|3682||2091||888||70.2%||44 of 2091||2.1%||15 of 84||17.9%|
|3684||80||105||43.2%||16 of 80||20.0%||12 of 19||63.2%|
|3685||85||233||26.7%||33 of 85||38.8%||17 of 40||42.5%|
|3686||125||285||30.5%||21 of 125||16.8%||12 of 24||50.5%|
|3687||182||271||40.2%||41 of 182||22.5%||20 of 48||41.7%|
|3688||81||386||17.3%||22 of 81||27.2%||18 of 30||60.0%|
|3689||25||535||4.5%||16 of 25||64.0%||13 of 17||76.5%|
|3691||283||553||33.9%||30 of 283||10.7%||16 of 59||27.1%|
|3693||389||911||42.7%||43 of 389||11.1%||12 of 63||19.0%|
|3694||345||487||41.5%||42 of 345||12.2%||12 of 56||21.4%|
|3695||151||257||37.0%||17 of 151||11.3%||8 of 32||25.0%|
There are several Art Units that have at least some information that makes you scratch your head and wonder why it is that things could be so bad. Art Unit 3622 has an allowance rate of 5.9%, with 8 of the 56 patents they have issued in the PatentCore collection being issued only after the filing of an appellate brief, but that means that only 14.3% of the patents issued were issued after an appellate brief was filed. The allowance rate is low, but that percentage being issued after an appellate brief doesn’t seem alarming, although the reversal rate of 63.6% is quite high.
Art Unit 3623 has an allowance rate that is reasonable for business method patents, although lower than ideal probably. Only 4.3% of the patents they issue are issued after the appellant files an appeal brief. The reversal rate at the Board is extremely high though at 86.7%. Similarly, Art Unit 3684 has a good allowance rate at 43.2%, but the reversal rate on appeal is 63.2%. It doesn’t seem that either of these Art Units force applicants to appeal to get a patent, but the reversal rate is cause for concern, as it is with Art Unit 3688. This bears further investigation to see what may be the cause.
Then we have Art Unit 3689, with an allowance rate of 4.5% and 64% of the patents they issue only being issued after the filing of an appeal brief. Combine this with a 76.5% reversal rate and there seems to be a real problem here. How can one business method Art Unit have a 70.2% allowance rate and another have a 4.5% allowance rate? Something is seriously wrong.
On top of all of this, applicants in Art Unit 3689 are doubly screwed thanks to the way the Patent Office handles Requests for Continued Examination. Once upon a time an RCE would go backwards in the queue to roughly the front of the line. Now it goes backwards much farther than that. The Office has rearranged the backlog from being high for applications not yet having a First Office Action to applications where there is an RCE filed.
I recently spoke with a patent attorney who has several cases in Art Unit 3689 and he was told that one long standing RCE is still many months from being considered, which will mean by the time the RCE is considered it will have been pending for over 2 years!
You just can’t have an Art Unit that refuses to issue patents and a Patent Office policy that lets RCEs lag for over 2 years. The RCE is nearly the universal choice of applicants who are prevented from obtaining a patent, for whatever reason. So if it takes 3 years to get a First Office Action, which is common in the business method space, and you spend 1 year prosecuting and then you file an RCE and wait 2 more years you now have had an application pending for 6 years. If you are in Art Unit 3689 those 6 years are wasted because it certainly looks like they rarely issue a patent without being ordered to do so by the Board.
In the United States everyone is supposed to enjoy the same rights and privileges, and this concept manifests itself in the ideal that everyone is entitled to equal treatment under the laws. As the United States Supreme Court has explained, the Fourteenth Amendment requires that all persons similarly situated shall be treated alike, under like circumstances and conditions, both in the privileges conferred and in the liabilities imposed. When those who appear similarly situated are nevertheless treated differently, the Equal Protection Clause requires at least a rational reason for the difference in order to assure that everyone is being treated fairly. In addition to what seems to be arbitrary and capricious denial of due process, there is most certainly unequal treatment among applicants at the USPTO. How else can you explain on business method Art Unit with an allowance rate of over 70% and one with an allowance rate of 4.5%. The fact that Patent Examiners and SPEs are openly admitting that they won’t issue patents is simply intolerable and an affront to the entire system.
I cannot see any justification whatsoever, let alone a rational justification, for some applicants being handled by Patent Examiners that simply refuse to do their job. They work for THE PATENT OFFICE, not the No Patent For You Office. They are supposed to work with and engage applicants in an effort to do justice, which means they are to issue patents when that is required.
The fact that entire Art Units seem to be ignoring the mandates of senior PTO management is one thing, but ignoring the law and denying adequate process and fair treatment raises the issue to a Constitutional concern. Patent Examiners are being directed to work to find allowable matter and, if appropriate, issue patents. That is their job and if they don’t want to do it then they should resign and allow the Office to find those who are interested in properly discharging the duties of their position.
Obviously, this issue is enormous and it seems unlikely that senior USPTO management will be able to wave a magic wand and fix it, although they certainly should try. So what do you do to deal with rogue examiners and rogue Art Units? If you have your application in Art Unit 3689, some other Art Unit with an extremely low allowance rate or in front of an examiner that simply refuses to issue patents you must resort to Track 1. Yes, the fee is $4,800 to accelerate, or $2,400 if you are a small entity, but you will save a lot of money in the long run. You will get a final decision on the merits within 12 months, but likely within 6 months given how the program is moving forward now. The USPTO is extremely proud of Track 1 and I suspect they are keeping a very close eye on those cases, so the likelihood of funny-business should be low. But even if the no-patent-for-you types examine your Track 1 application, continuation or RCE at least you can get to the appeal stage all the quicker. Save yourself the hassle of an examination that will go no where, unnecessary thousands of dollars in legal fees and simply accelerate and then go to the Board where you have close to an 80% chance of success. Use the procedure to your advantage and minimize those examiners who simply refuse to issue patents.
Is there a silver lining to this story? Yes. It seems that everyone agrees that the problems with rogue Art Units is in the first line of management. I hear from anonymous young examiners, and young examiners who will remain anonymous to you but who I know. These young examiners seem deeply committed to the patent system and want to issue patents but are told by their SPEs that they have to come up with rejections and if they cannot find a valid rejection to just make something up. They are troubled and speak out behind the scenes. So if the USPTO can fix the problem of those first line managers who simply seem to hate patents and the patent system the future looks bright. Those new, young examiners really seem to care.
So here is a word of encouragement to those young examiners who do care and are being told to do things they know is wrong. Hang in there! The patent system needs you! The fact that you care and are troubled by the denial of patents that should rightfully be issued suggests to me that you are exactly the type of Patent Examiner we need. Don’t give up. Things will get better. This and other data coming to light thanks to PatentCore will certainly lead to reforms over time.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.