Last week the United States Patent and Trademark Office announced that they will be holding a roundtable event on April 10, 2014, to discuss President Obama’s desire to find ways to allow the public to provide the Patent Office with prior art.
The patent laws already allow the public to submit prior art, and the public has hardly noticed. In fact, the America Invents Act (AIA) ushered in a new era of so-called crowdsourcing of prior art with the institution of third-party preissuance submissions. Despite how sexy this initiative seemed at the time or may seem in a social media, crowdsourcing conscious public, the reality is that during the first 15 months one could make a third-party preissuance submission there were only 1,228 such submissions filed, During this same time there were never fewer than 584,998 applications at the Patent Office awaiting first action.
The number of applications third party submissions could be filed in during this time would be much, much higher since a third-party submission can be filed prior to the earlier of: (1) The date a notice of allowance; OR (2) The later of: (i) 6 months after the date on which the application is first published by the USPTO, or (ii) The date of the first rejection of any claim by the examiner. But even if we conservatively assume that 584,998 application were available for such a filing that means that a minimum of 99.8% of applications have received no third-party preissuance submission. So much for the popularity of crowdsourcing prior art, at least prior to patent issuance.
Thus, essentially President Obama is instructing the USPTO to explore measures to make it easier for the public to provide information about relevant prior art by refining its third-party submission program and exploring other ways for the public to submit prior art to the agency.
The USPTO is seeking any comments relating to discussions relevant to the current third-party preissuance submission practice, as well as ways the Office can use crowdsourcing to improve quality patent examination. The USPTO announcement did, however, highlight six specific questions where comments would be particularly helpful. These are:
- How can the Office leverage the collective knowledge available via crowdsourcing to provide an examiner with relevant prior art?
- What suggestions do you have for the Office to encourage more third-party submissions from the scientific and technical community via crowdsourcing activities?
- Aside from encouraging more third-party submissions, what are other ways the Office can leverage crowdsourcing to get relevant information from experts in the scientific and technical community to the examiner?
- How can the Office encourage more third-party participation while ensuring that no protest or other form of pre-issuance opposition to the grant of a patent on an application is initiated after publication of the application?
- What, if anything, is preventing you from submitting prior art as part of a third-party submission?
- What other ideas do you have to ensure examiners have the most relevant prior art in front of them during examination?
Before proceeding, I need to take a moment to substantively comment about Question #4. This question strikes me as peculiar because currently a preissuance submission can in at least some circumstances be timely filled with the Office up to 6 months after first publication of the patent application. Granted, the question is specifically asking about “preissuance opposition.” Perhaps the question is for the purpose of cutting off discussion of the adoption of an opposition system system akin to what is available in some foreign countries. The way this is worded is still odd though, and harkens back to pre-AIA where a protest could only be filed prior to publication of the application, but how would you know the application existed prior to publication?
In any event, the real problem facing the Patent Office isn’t just that the industry by and large has completely rejected preissuance submissions, but rather the real problem is why. I have repeatedly heard this: “Why would I want to file prior art to help make the patent stronger?” In fact, at a recent conference I heard one attorney who had filed a preissuance submission explain that a strategic decision was made not to file the best prior art because if the patent examiner issues the patent anyway the client decided they wanted to hold on to the best prior art to challenge the patent later.
This logic may seem backward, particularly given that the cost of making a preissuance submission is much lower than the cost of challenging a patent either in litigation or in a post grant challenge. But if a patent examiner considered prior art and decided to issue claims, perhaps claims that the patent applicant narrowed to overcome a rejection, the resulting patent claims would be stronger because not only would claims be stronger but the examiner would have considered the reference, making it potentially more difficult to mount a challenge later using that same prior art.
At the moment there are many, including Chief Judge Rader of the Federal Circuit, who view the Patent Trial and Appeals Board (PTAB) at the USPTO as a patent death squad. As long as the PTAB continues to find claim after claim of patent after patent to be invalid it will be impossible to shake that perception, and it will be difficult if not impossible for challengers to see the wisdom in not rolling the dice with what has become an incredibly favorable venue. Indeed, it seems the negatives significantly outweigh the positives with respect to filing a preissuance submission.
In any event, those who are so inclined to submit comments are instructed to do so in writing no later than April 25, 2014. Written comments should be sent by electronic mail addressed to CrowdsourcingRoundtable2014@ uspto.gov. Comments also may be submitted by postal mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Nicole Dretar Haines. Although comments may be submitted by postal mail, the Office prefers to receive comments by electronic mail.
Registration to attend the roundtable in person or via webcast is required by April 4, 2014. Additionally, members of the public who wish to participate in the roundtable as a speaker must do so by request in writing no later than March 27, 2014.