Biased Report Chastises USPTO for Insufficient Quality Control

By Gene Quinn
April 15, 2015

uspto_main-campusYesterday the Inspector General for the Department of Commerce issued a scathing report that questions the quality of the job patent examiners are doing at the United States Patent and Trademark Office. Unfortunately, the report is hopelessly biased and, therefore, wholly unreliable. Rather than perform an independent assessment, as IGs are supposed to do, the IG looked to see whether patent examiners are rejecting enough applications without regard to whether they are rejecting applications that deserve to be allowed. As such, this IG report contributes nothing more than the unjustified politicization of an important issue.

The IG’s report asserts that the audit of the USPTO reviewed three programs to determine patent examination quality: (1) performance appraisal reviews, (2) independent reviews by the Office of Patent Quality Assurance (OPQA), and (3) signatory authority reviews. The report explains that a quality patent is one that has claims that “clearly define and provide clear notice of their boundaries.” Low quality patents were defined as those “patents are those that contain unclear property rights, overly broad claims, or both.” The report explains that low quality patents are problematic because of the “[i]ncreasing concerns regarding abusive patent litigation.” Thus, the report itself cannot be said to be free from political influence and, in fact, plays into the misleading narrative that there is a run away abusive patent litigation problem in America.

Indeed, the report by its own admission looked at no more than one-half of the patent quality equation to reach its conclusion that patent examiners are not doing a quality job. It would have been appropriated, and expected, for the IG to engage in an even-handed review to determine not only whether patent examiners are issuing low quality patents, but also whether examiners are refusing to issue high quality patents, which is a real problem in at least some technology areas.

The reality that patent examiners in many instances refuse to issue quality patents on sound and commercially relevant innovations does not play into the preordained political narrative and, therefore, was not the subject of inquiry by the IG audit. What that means, however, is that this report, while it may provide some useful clues, cannot be treated as a thorough and thoughtful consideration of the important issues surrounding patent quality. Certainly, the Patent Office can and should be keeping better track of quality metrics in an objective manner, but the IG ignoring that patent quality is and must remain a two-way street is mind-boggling. Refusing to look at the matter from both the perspective of the public AND the perspective of the innovator is inexplicable. Looking at the issue from only one vantage point, namely whether low quality patents are issued, results in a predictable and inaccurate view of reality.

A fair treatment of the issue of patent quality would have necessarily considered those applicants that were wrongfully denied, as well as the extraordinary wait one must endure on appeal to the Patent Trial and Appeal Board to rectify examiner mistakes. Anything short of a fair and even-handed inquiry is not only inappropriate, but seems intended to lead to a conclusion that supports a preordained narrative. Sadly, this preordained narrative fits perfectly into the view of one side of the patent reform debate. With Congress considering patent reform in both the House and Senate the timing on the release of this one-sided report seems hardly coincidental.

Thankfully, at least the bias of the IG audit is not hidden. The report explains that the audit objective was, in part, to “determine the sufficiency of USPTO’s quality assurance program’s processes to prevent the issuance of low-quality patents.” The other objective was access whether there are procedures in place to ensure that examiners are fully qualified to issue patent determinations without supervisory review. Based on the stated objective of the IG audit, there was never any intention of reviewing quality objectively. The objective was to see if enough patents are being denied, period.

Throughout the report did, however, it was repeatedly stated that the Office of Patent Quality Assurance (OPQA) tried to explain to the IG that performance must include consideration of not only what should have been rejected, but also consideration of situations where examiners rejected claims that should have been allowed, which also leads to low-quality. It seems that perfectly correct and legitimate point of view did not resonate. I presume the reality that quality is a two-way street was ignored because it did not fit within the narrowly defined, predetermined viewpoint the report was intended to support.

Given the IG’s stated concern of abusive patent litigation it is hardly surprising that no effort was made to evaluate quality in a fair and unbiased manner. Still, completely ignoring quality from the point of view of the innovator calls into question everything about the IG report. Simply stated, a biased inquiry cannot lead to anything other than a biased report. Thus, those reviewing the IG report should take its conclusions with a healthy grain of salt.

Political reports that take into consideration only half the facts are hardly shocking in Washington, DC. Sadly, because this IG report lends an undeserving air of credibility that seems thoroughly intended throw the Patent Office under the bus in order to forward a popular misconception that the only problem with the patent system is that the Patent Office issues patents. As such, this biased report, which will influence the political debate over patent reform, places yet another burden on innovators who need and deserve patent protection.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 25 Comments comments.

  1. Mark Hrozenchik April 16, 2015 6:33 am

    There is no recourse, other than the appeal process, to overcome examiners that do a bad job in rejecting claims that should have been allowed (and that can be expensive). There is NO internal review that I know of that takes abandoned cases and determines whether the examiner has made a mistake. A more nuanced approach would see if overly narrow claims were necessitated by poor examination. But, we should take baby steps with the PTO first . . . .

  2. Benny April 16, 2015 6:57 am

    I can only attest to the field in which I work, but in this particular field, the issuance of what is defined in the article as “low quality patents” is definitely a problem, while I don’t recall cases of patent applications for novel innovations being rejected out of hand. I stress that my observation is restricted to a particular classification.

  3. Itzik April 16, 2015 7:27 am

    Gene, I see that even you fell in the trap of differentiating between “the public interest” and “the innovator interest”, as if the public has no interest in innovation. It is everybody’s interest, innovators and non-innovators alike, that all patentable inventions are patented, (and only patentable inventions are patented).

    Personally, I believe the problem with the USPTO is not so much the quality control, but the incentive given to Examiners. When the USPTO starts enforcing its own alleged policy of compact prosecution, quality will raise. But as long as examiners are paid per rejection, and there may be many rejections per application and only one allowance, the Office is doomed to produce low quality rejections, and too few patents.

  4. Gene Quinn April 16, 2015 9:12 am

    Itzik-

    It is also in the public’s interest to not have crazy, stupid, ridiculously broad patent claims issued.

    -Gnee

  5. Gene Quinn April 16, 2015 9:13 am

    Benny-

    Please give examples of low quality patents and explanation as to why you think they are low quality patents so we can evaluate your assertion.

    -Gene

  6. Benny April 16, 2015 9:39 am

    Gene,
    I prefer not to point to a specific patent so as not to spell out exactly where I work, but I could point to one patent which virtually duplicated a component manufacturers’ openly published application note, and a second patent which was nothing more than two known and well documented widgets clipped together.

  7. Benny April 16, 2015 9:53 am

    Gene,
    Here is a very well known patent with overly broad claims – US5847450. Most engineers would consider it too obvious to apply for a patent. (even in the mid 90’s). Perhaps you can tell me if the USPTO has changed since then.

  8. The REAL IP Watchdog April 16, 2015 11:29 am

    Gene,

    I think you hit the nail on the head. I would also add that trying to numerate quality and attempting to define a boiler plate way of determining quality is next to impossible – especially when dealing with laws. Have you ever seen two judges disagree on a case? Is one a good judge and the other a bad judge? When we look at IP law, a lot of it is based on interpretation of claim breadth as well as interpretation of the law. The PTO has tried for years to figure out what equates to good vs. bad quality. It really comes down to a case by case basis, in which neither the IG or any type of congressional hearing can draw conclusive results. If they want to attack the “way” the PTO tries to determine quality that is one thing. If they are trying to make a blanket statement that the PTO is producing bad quality, that is another thing – which I would argue they haven’t and will probably never be able to prove.

  9. Gene Quinn April 16, 2015 11:30 am

    Benny-

    If you are not willing to give examples of low quality patents then you really shouldn’t be making such sweeping statements. Charges like the ones you made require at least a scintilla of proof otherwise they are wholly unreliable.

    In your case it is also particularly important for us to evaluate because you are not an attorney. So what you think may be a low quality patent may very well be nothing of the sort.

    Finally, what you describe, if it happened, would be an example of fraud on the PTO and not indicative of patent office error really.

    -Gene

  10. Benny April 16, 2015 11:38 am

    Gene,
    “… would be an example of fraud on the PTO…”
    Never attribute to malice that which is adequately explained by stupidity.
    I DID give an example of what I ( and others in the engineering community) consider, from an engineering viewpoint, a low quality patent (too broad, too obvious). Your opinion, as an attorney, would be welcome.

  11. Gene Quinn April 16, 2015 1:47 pm

    Benny-

    I must have missed your example. Can you please provide the patent number again? All I saw was a nebulous description of something that allegedly happened but without any quoting of claims or disclosure.

    -Gene

  12. MetaHeckler April 16, 2015 2:24 pm

    How about this one:

    No. 8,965,812

    Evaluating commodity conditions using aerial image data

    Assignee: Archer Daniels Midland Co.

    Issued: February 24, 2015

    1. A method for evaluating the condition of an agricultural commodity and forecasting the production thereof in a geographical region of interest, the method comprising:

    identifying one or more geographical regions of interest, wherein the geographical region of interest comprises a plurality of different locations that historically have been sites for production of the agricultural commodity;
    obtaining an aircraft equipped with an image data acquisition system capable of collecting data;

    tasking an aircraft to fly along a travel route that is developed so that the aircraft travels across the regions of interest wherein the travel route is based on the consideration of historical data regarding production of a specified crop in one or more of the regions of interest;

    tasking the aircraft to fly along the travel route over the plurality of different locations and having the aircraft collect a plurality of sequential image data over the plurality of different locations crossed over by the travel route;

    using an image processing device to analyze the collected image data to determine at least one of a type and a condition of one or more commodities in the geographical region of interest; and

    forecasting the production of the agricultural commodity in the geographical region of interest based on the determined type and condition.

  13. Joachim Martillo April 16, 2015 2:29 pm

    Am I the only patent consultant that has to deal with office actions that are incomprehensible because the examiner is unable to write something approximating reasonable English?

  14. Gene Quinn April 16, 2015 3:25 pm

    MetaHeckler-

    I haven’t done any kind of exhaustive review of the patent, but based on my preliminary review I would have to concur (i.e., it is my opinion) that this would be an example of a low quality patent. I believe it to be a low quality patent not because of the claim you cite, which could be fine with proper disclosure, but because the specification appears completely void of any kind of technical information that explains how one would carry out the invention. The string “analyz” appears 7 times in the patent and not once is it explained with any level of detail, let alone the level of detail that one would suspect would be sufficient to satisfy patentability requirements.

    -Gene

  15. Gene Quinn April 16, 2015 5:49 pm

    Joachim-

    No. Many others I know complain that English is not the first language of certain examiners. I guess that didn’t matter to the Inspector General either.

    -Gene

  16. J.K. April 17, 2015 11:24 pm

    There are a few structural issues that are problematic in the system.

    The first is that more than sixty percent of the funding comes from issue and maintenance fees. Introducing an incentive like that, created a graph like this: http://www.askingwhynot.com/2013/11/why-we-need-to-rethink-innovation-story.html
    Imagine a court with a similar scheme…

    The second point is that the laws simply can’t keep up. The more useless a device is, the more likely it is to be patented. The tests pretty much exclude the ordinary inventor; they rely on this. The options to get a patent are three: pure genius, pure stupidity, or willingness to get a copyright instead.

    This leads to the third point, which is that matters of law should be dealt with by courts. Matters of fact should be the one and only role of examiners.
    The fact finding examination procedure has been transformed into a legal, paralegal and philological review. All due to point one. The kicker is that the entire transformation happened without any internal restructuring– it is the seventies on the inside.

    The final issue and perhaps the most important is that absolutely nothing in the entire process is tied to actually making a product. Before, during or after. Even less to making anything here. The noise is overwhelming. Like fiat currency.

    So, how can one expect quality from anyone when the foundation is built on sand?

    They are looking at the tree, because they have become the forest, and no one wants to upset the entire ecosystem, right? It took great minds to start the process, so…

  17. Anon April 18, 2015 12:38 pm

    J.K.

    The work of Gary Shuster is interesting, but is pure fantasy.

    Unfortunately (for you), the rest of your post is also pure fantasy when it comes to law, the history of law and the very treatment you attempt to render of fact and law.

    As is often the case, you merely label as problems those things that do not fit into your world view.

    Great for a fan-zine, not so much for a serious discussion of law.

  18. Old Examiner April 19, 2015 10:37 am

    In my opinion, there are various reasons for patent “quality” as was pointed out by Gene in the previous column:

    http://www.ipwatchdog.com/2009/04/17/an-old-patent-examiner-explains-poor-patent-quality/id=2651/

    During my time at the PTO, I have seen every type of examiner imaginable. There are those who will spend 5 minutes searching and issue a case, while others who won’t allow anything until hell freezes over. As in any profession, there are all levels of competency, but for the most part, the examiners I deal with attempt to do a decent job. Regardless of the examiner, unless the best art is discovered, patent quality will not be good. The Office failed to keep up with the classification system, and the new International system in many cases is worse. Word searching is great, but searching patent-by-patent is necessary quite often to find the best art; however, it is virtually impossible to do when there are thousands of patents in a subclass. I know a subclass I created 25 years ago with 20 references in it now has almost 9,000. One can no longer master the art like I was able to do at one time. Therefore, the quality of prosecution suffers resulting in “low quality” patents, extended prosecution, or numerous appeals.

  19. Benny April 19, 2015 11:02 am

    Old_examiner,
    Prior art is not restricted to patents and published applications. For this reason and the other limitations you mentioned, the USPTO should be pro-active in soliciting prior art from the industry. We are more than willing to help.

  20. Old Examiner April 19, 2015 11:23 am

    Examiners have the resources to have searches done of the published literature. Also, 3rd parties have the ability to submit relevant art under 35 U.S.C. 122:

    35 U.S.C. 122 Confidential status of applications; publication of patent applications.
    *****

    (c) PROTEST AND PRE-ISSUANCE OPPOSITION.— The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.
    (e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—
    (1)_ IN GENERAL.— Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—
    (A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
    (B) the later of—
    (i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or
    (ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.
    (2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—
    (A) set forth a concise description of the asserted relevance of each submitted document;
    (B) be accompanied by such fee as the Director may prescribe; and
    (C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.

  21. Anon April 19, 2015 1:01 pm

    Benny @ 19,

    You have a rather large inherent problem** with obtaining the benefit of anyone outside of the Office without in a very real sense violating the Quid Pro Quo, since you take ALL of the Quo with only a promise of the Quid.

    ** I am aware that the situation is somewhat more complicated with publication prior to grant, but that is an entirely separate discussion.

  22. Gene Quinn April 19, 2015 5:30 pm

    Benny-

    You say: “the USPTO should be pro-active in soliciting prior art from the industry.

    The AIA ushered in a new era of crowdsourcing. It was supposed to be a panacea. The problem is that virtually no one ever makes a third party pre-issuance submission.

    -Gene

  23. Old Examiner April 20, 2015 12:59 am

    I know that I have yet to see a third party submission in any of my cases or those of other examiners that I review.

  24. Benny April 20, 2015 2:50 am

    Gene,
    That is exactly my point. While the USPTO makes it possible to file a third party submission, it doesn’t go out of its’ way to encourage such submissions from the industry – where a cadre of professionals with far greater depth of technical knowledge than the examiner can provide valuable input.

    Anon at 21 – since most applications are published before examination, I fail to see your point regarding the Quid Pro Quo. Furthermore, if I do find novelty destroying prior art, I am proving that the applicant has provided nothing that I didn’t know already or could find out for myself.

  25. Gene Quinn April 20, 2015 1:21 pm

    Benny-

    There really is nothing the USPTO can do to encourage third party submissions. Those who have the interest don’t have the desire because they view it as only helping the competition get a better, more likely valid patent.

    -Gene