Steps the PTO must take to address low quality patent examination

By Gene Quinn
August 2, 2016

uspto-building-angle-335 copyThe USPTO does have a legitimate gripe with certain patent applicants and practitioners. Only someone who is unfamiliar with the industry would ignore the reality that some applicants and some patent practitioners produce predictably low quality. Likewise, you would have to be willfully ignorant not to appreciate the problems created by the filing of applications that consist of extremely low quality translations of foreign filed patent applications. And, frankly, I’ve never understood foreign applicants not paying U.S. practitioners to fix claims and put them into an acceptable U.S. format, which practically guarantees an unnecessarily prolonged prosecution of the patent application.

Unfortunately, the United States Patent and Trademark Office has lost credibility when it comes to calls for patent quality. As so many in the industry feared when the latest round of patent quality initiatives started, patent quality in the mind of the USPTO is a one way street where applicants and patent attorneys need to step up their game because they are the problem. What about quality examination? The Patent Office talks about that far less than what applicants and practitioners are doing wrong in their view.

While any system should always aspire to provide better quality, the patent system included, patent quality is a two way street that requires the Office to look in the mirror and take care of its own internal business. If the Patent Office is truly interested in quality they should take steps to address low quality patent examination, which is unfortunately too common.

 

Administrative sloth requires accelerated appeals

When the Board completely reverses an examiner, finding no merit to any of the rejections raised by the examiner, ordinarily you would suspect that a patent would issue. That, however, is not what you should expect in TC 3600. Instead, you should not expect a patent to issue. You should expect the reopening of prosecution and a new search in violation of MPEP 1204.04.

It has been argued by some that I am making a mountain out of a molehill because in those cases that have been recently reopened in TC 3600 after a complete reversal by the Board were in order to issue an Alice rejection. These appeals were filed before the Supreme Court decided Alice, thus it would seem reasonable to review the claims in light of Alice. It may have been reasonable to reconsider the claims in light of Alice several years ago, but more than two years later after the applicant has already been unreasonably (and unnecessarily) forced to wait an excruciating long time since filing? Let’s not forget, if the examiner had actually done their job in these cases these applications would have issued BEFORE the Supreme Court decided Alice. It is utterly unbelievable that an examiner who was completely wrong about everything can continue to prevent the application from issuing. There will always be another case from the Federal Circuit or Supreme Court that would allow the recalcitrant examiner to reopen prosecution. It will never end!

These cases sat on appeal for 3+ years. The outcome of the Board really didn’t matter, as we know, since in those cases where the examiner was found to be completely wrong Alice rejections were then issued. Forget that the Board has the authority to issue new grounds of rejection, which they didn’t see fit to do in any of these cases. Forget that the Board has the authority to issue a remand for the examiner to specifically reconsider one or more claims, again which did not happen. A process that treats applicants, who are presumed to be entitled to a patent, in this way is hopelessly broken.

It is unconscionable that the Patent Office would allow these applicants to sit waiting for the right to fix egregious errors for years. Alice is hardly a new case – it was decided in June 2014. The Board is well aware of Alice. The Office and examiners are well aware of Alice. To have allowed these applicants to just sit waiting only to have the Board decision be meaningless is simply shocking.

A patent is a wasting asset! Extending the patent term is NOT a solution for software related innovations. These types of innovations have a short half-life. Only rarely will one of these innovations meaningfully enjoy a full, useful patent term. So adding patent term on the back end does NOT compensate the applicant for administrative sloth and intentional harassment by examiners who fundamentally and philosophically oppose the patent system.

TO THE OFFICE: The rule says that the Director is the one who is authorized to reopen prosecution after an appeal. This authority has been delegated to the Directors in the Technology Centers. The delegation of authority comes from the MPEP, which is Office policy that can be changed. It should be changed immediately. Reopening prosecution should happen only in the rarest of cases, and it should only be authorized by the Director, Deputy Director or Commissioner for Patents. Such a change would immediately put the leaders of the Patent Office back in charge, assuming that they disagree with this piecemeal it-takes-a-generation approach to prosecution.

Furthermore, if a case is reopened it should be treated with special dispatch and moved to the front of all lines. While many examiners hate hearing it, the law actually says that the applicant is entitled to a patent unless a valid rejection can be raised. That should mean a valid rejection raised in a reasonable period of time. This war of attrition be waged by some patent examiners against applicants is indefensible.

TO STAKEHOLDERS: If you have an appeal pending that was filed before Alice and you are in TC 3600 you might as well file an expedited Track One RCE, get your Alice rejection, and then get back in line for appeal. It makes absolutely no sense to wait for a Board decision when the case is only going to be reopened if you prevail. The risk is just too great to let the Board decide. If you lose the appeal the examiner won’t reopen prosecution because they think the Board made a mistake. Prosecution is only reopened when you win, which makes the Board decision a lose-lose proposition.

 

Decisions not on the record

Decisions of the Patent Office are supposed to be based only on the written record. 37 C.F.R. 1.2 explains this rule:

The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

The problem is the Patent Office is not basing decisions on the written record. There are unwritten biases of SPEs, Technology Center Directors and Quality Assurance Supervisors (QAS). When an examiner says he or she will not follow a Federal Circuit decision, or a SPE won’t allow those types of patents to issue, that means decisions are being based on things not in the record. It also means Patent Office Guidelines are being ignored.

Although perhaps not exactly what Rule 1.2 is about, the spirit of the rule seems quite clearly intent on creating a complete record for posterity. But the prosecution file is anything but a complete record. Not everything is placed into the record by the Patent Office. Indeed, the prosecution history is a carefully curated selection of documents and stories the applicant and public are allowed to see, not a true representation of what happened during the prosecution.

For example, for many years the Patent Office operated a secret regime called SAWS. If your application were caught up in SAWS you were not told, but your application would be placed into administrative purgatory needing multiple approvals by many different people. The Office created SAWS for what they deemed “sensitive” applications, but it morphed into including any application that covered a technology that the Patent Office themselves might want to use. That isn’t how the system is supposed to work, and applicants caught in the SAWS trap didn’t even know. How is that possible given the record is supposed to be open to the public?

Now second pair of eyes review has returned to the Patent Office for those patent applications impacted by the Supreme Court’s decision in Alice v. CLS Bank. To my knowledge the Office has never publicly announced that each Art Unit has a so-called “Alice expert” who is responsible for reviewing any allowance before an application receives a Notice of Allowance. Of course, this means that the ultimate decision maker is not the examiner you are working with, and might not even be the SPE. Not surprisingly, reports are that the Alice expert is not consulted if the examiner wants to reject an application. So it seems that the Office is only interested in second guessing when an examiner wants to allow, not when an examiner wants to reject, which is all to familiar.

The Patent Office loses all credibility when secret decisions related to applications are made by those not even mentioned in anywhere in the record. It is bad enough that examiners openly admit to practitioners that they will not follow the Office Guidelines or Federal Circuit cases, but when decisions are made in secret the system has become bankrupt.

TO THE OFFICE: If you want to have multiple rounds of review by multiple examiners or “experts” before an application receives an allowance, fine. I don’t think anything at the Office should be done in serial fashion like this, wasting precious resources. Wasting resources in this way is what lead to the out of control pendency problems during the Dudas Administration at the USPTO. If you are going to subject applicants to serial reviews at least have the guts to let everyone know.

Having a complete record means that the Office needs to record what is being done and by who, period. No secrets. No more decisions made behind closed doors by unknown actors following their own personal ideology.

TO STAKEHOLDERS: Given that the Office does not seem particularly interested in ensuring a complete written record it is essential that applicants do whatever possible to force the issue. If you are in an Alice impacted Art Unit you need to find out the name of the Alice expert and have that individual present at any and all interviews. If you are not provided the name of the Alice expert, or the Alice expert does not participate in an interview at your request, you must place a notation on the file to keep the record clear and reflective of what is actually happening, and that there are secret actors that you are not being allowed to contact.

 

Reassign patent examiners

It may be virtually impossible to fire a federal government employee, such as a patent examiner, even when that examiner is submitting fraudulent time sheets. Once upon a time the way the Patent Office dealt with recalcitrant patent examiners who would not get with the program was through an internal exile. I’ve heard many old-timers tell stories of people being sent to Classifications, which was the Patent Office equivalent of Siberia. Some would simply quit, some would go and never get out of Classifications, some would go and then return, understanding the importance of getting on board.

As far as I know, there is no such similar internal exile any more. Instead, recalcitrant patent examiners are simply left on the front lines to harass applicants as if this is just some big game.

NEWSFLASH: This is not a game to the inventors and companies that seek patent rights. Stakeholders deserve better than an examiner so confident in their defiance that they brag about not issuing patents for years, or declare with an arrogant confidence that they will not follow the Federal Circuit ruling in DDR Holdings v. Hotels.com because the decision is just an aberration.

TO THE OFFICE: If a patent examiner has not issued a patent in years, and there are more than a few that fall into this category, they shouldn’t be examining patent applications, period. If you cannot fire examiners who refuse to issue patents at least put them in positions where they do no damage to applicants.

TO STAKEHOLDERS: Practitioners need to file interview summaries that contain these shocking admissions from patent examiners. An examiner’s utter disregard for the law and the disdain for the patent system MUST be placed on the record. That is the only way anything is ever going to change.

 

UPDATED: 10:24am ET

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 14 Comments comments.

  1. Anon August 2, 2016 6:26 pm

    Excellent capstone piece to the series of articles Gene.

    I would only add my previous point about the Office necessarily constrained to fixing what is under its control and that a true quality system should be built to handle any and all inputs (including the “bad” ones) in a smart, efficient and timely manner.

    The example patent “on that other blog” used as an example of “bad input” is instead a condemnation of the Office. That patent was in the control of the Office for nearly a decade, earning six and a half years of Patent Term Adjustment for delays solely in the control of the Office. Further, any criticism of the granted patent is fully on the Office, as NO applicant has the power to force the Office to issue an improvident patent.

    This is not rocket science and all types of processes are devised all the time that handle inferior inputs and maintain high quality outputs. If every input were a gem, then we would not even need examination.

    What is really going on every time someone (anyone) wants to “blame the applicant,” is merely the Office trying to not do their job.

  2. WTS August 3, 2016 12:05 am

    What amazes me is the steadfast resistance on the part of the USPTO to foster innovation via R+D. Instead of promoting the development of technology in the current and future economy, the USPTO appears to care only about non-computer-implemented inventions, while following the Google/Obama administration’s goal of removing all technological innovations from patent protection.

    It’s absolutely crazy to me as both a former patent examiner and current patent attorney that the official position of the US is that the real developments in technology are not protectable, as this absolutely disincentives actual R+D in the fields where the future of practically every technology lies.

    This Luddite position on the part of the US government can only foster an economy where our economy no longer leads the world in innovation, but instead takes its marching orders from whatever nation decides to actually foster innovation in view of the relevant treaty obligations.

    Is this a passing of the torch to other nations to lead the world in the technology economy?

  3. Nelson Avek August 3, 2016 3:39 am

    Hello Mr. Quinn,

    You have written:
    ” And, frankly, I’ve never understood foreign applicants not paying U.S. practitioners to fix claims and put them into an acceptable U.S. format, which ‘practically guarantees an unnecessarily prolonged prosecution of the patent application.'”

    Mr. Quinn, don’t you think that if an attorney is not making a foreign client aware of the consequences, he is breaking the ABA Model Rule 1.4(b); 37 CFR Section 11.104(b) says that a lawyer have an obligation to explain a matter to an extent that a client “understands” the whole matter.

    Plus, as the IPR rejections are skyrocketing and every 3 out of 4 patents are not surviving a petition, it again pinpoints that attorneys while prosecution are not doing thorough and reasonable preparation? This again, if I am not wrong, is violation of C.F.R. Section 11.101, the first rule of attorney ethics. Similar views are expressed by your colleague Mr. Halber, a former Sughrue Mion attorney, in one of his articles here: http://www.greyb.com/duty-ip-lawyers-educate-client/

    So, yeah an examiner could be totally wrong in some of his assessments but he can’t be in all. And in the assessments where he is right, who is wrong? The attorney, I guess.

  4. Anon August 3, 2016 6:47 am

    it again pinpoints that attorneys while prosecution are not doing thorough and reasonable preparation?

    Nelson – all you do with this statement is play the old game of “blame the applicant.”

    Please stop that nonsense.

    At the very least, you presume that the steps along the way in prosecution are taken without the client being informed. That is a grievous error.

  5. Mark Nowotarski August 3, 2016 8:35 am

    If I had Track 1 for an appeal, I would use it.

  6. KenF August 3, 2016 9:47 am

    “It may be virtually impossible to fire a federal government employee, such as a patent examiner, even when that examiner is submitting fraudulent time sheets”

    I had one examiner outright refuse to withdraw rejection his SPE TOLD him was bogus. In an interview summary, he essentially intimate I was drunk or an idiot by asserting that he thought I was arguing over the wrong application. And this jackhole is still on the PTO roster of examiners…….

  7. Gene Quinn August 3, 2016 9:53 am

    Nelson-

    You seem to suggest that patent attorneys are not advising that foreign clients not put claims and applications in US condition. Patent attorneys do. Clients don’t want to pay the money when they file. They don’t know whether they will eventually want to abandon the application, apparently, so why pay the money to do the filing properly when they can simply file bad translations with awful claims. At the end of the day doing what the client directs you to do, if legal, is not a violation of the rules of ethics.

    You ask: “Plus, as the IPR rejections are skyrocketing and every 3 out of 4 patents are not surviving a petition, it again pinpoints that attorneys while prosecution are not doing thorough and reasonable preparation?”

    That patents claims are being rejected it really is an indictment against the job patent examiners are doing. Patent applications remain secret for 18 months, sometimes longer. So any patent search done by the applicant prior to filing is at best the 80% solution. You simply cannot find everything that an examiner will be able to use as prior art. So you file applications with imperfect knowledge doing the best we can knowing that we are writing applications based on the state of the art as it existed 18 months ago. But when an examiner examines an application years later and allows the application the examiner has available all possible prior art that can be used against the applicant. So the PTAB needing to act as a death squad shows just exactly how low the quality of examinations at the USPTO.

    You say: “So, yeah an examiner could be totally wrong in some of his assessments but he can’t be in all.”

    You need to review the Office Actions from the E-commerce Art Units in TC 3600. Examiners being wrong on all rejections is more common than them being correct.

    -Gene

  8. Curious August 3, 2016 10:22 am

    Plus, as the IPR rejections are skyrocketing and every 3 out of 4 patents are not surviving a petition, it again pinpoints that attorneys while prosecution are not doing thorough and reasonable preparation?
    No amount of “preparation” by an attorney is going to fix good prior art (not to be taken as an admission that those “3 out of 4 patents” were sunk because of quality prior art). An invention is what it is.

    So, yeah an examiner could be totally wrong in some of his assessments but he can’t be in all. And in the assessments where he is right, who is wrong? The attorney, I guess.
    Your comment about “where he is right, who is wrong?” is a great example of a false dichotomy as it incorrectly presumes that the attorney questions when the Examiner is right. A decision on unpatentability always rests on a multitude of factual and/or legal findings and I only need to establish examiner error in one of those findings.

  9. Nelson Avek August 4, 2016 3:39 am

    Hello Mr. Quinn,

    Thanks for your response. I’ve understood your perspective.

    Regarding examiner being wrong in TC3600, I heard your arguments in your recent webinar.

    Thanks once again.

    -Nelson

  10. David R August 4, 2016 10:06 am

    Once again, Quinn, you misunderstand. The PTAB isn’t making new grounds of rejection based on Alice because they, themselves, don’t want to be the ones making a bad Alice rejection because they, themselves, don’t understand Alice. It’s far easier to say “nope Alice is needed” and then shunt that case back to the Examiner to make the mistakes and leave them holding the bag.

    You have legit gripes, but you’re being distracted exactly the way they want you to be.

  11. Gene Quinn August 4, 2016 11:12 am

    David R-

    Awful condescending for someone with nothing substantive to add to the conversation. Interesting.

    Not sure how anyone who is paying attention can say I’m being distracted as I point out chapter and verse how the Emperor isn’t wearing any clothes.

    So, I’m not missing anything or being distracted. You are just missing the entire point. The PTAB is obviously powerless to act as a check and balance on patent examiners, but at the same time they have omnipotent powers to strip vested patent rights away from property owners.

    Furthermore, there are clearly things the Patent Office can do to fix this situation, but they haven’t done anything and the problem continues with cases being reopened. So obviously the Patent Office management is perfectly pleased with the harassment of patent applicants.

    Please try and keep up.

  12. Curious August 4, 2016 12:59 pm

    It’s far easier to say “nope Alice is needed” and then shunt that case back to the Examiner to make the mistakes and leave them holding the bag.
    Compact prosecution anyone? Why should applicant be forced to go back down to the examiner, get a 35 USC 101 rejection, and wait another 3-5 years before the appeal is handled by the Board when the Board could have addressed the issue right then and there? The Board never has a problem introducing new grounds of rejection — I see them do it all the time (they even designate them as such from time to time). If they can introduce new grounds, when cannot they evaluate the claims versus 35 USC 101 right then and there? I’ve seen dozens and dozens of 101 rejections and a scant few ever involve findings of fact that go outside the record. As such, it isn’t as if the record needs additional development before the Board passes judgment.

    Also, it isn’t as if (particularly in TC 3600) that arguments/amendments are going to overcome the 101 rejection. Once an examiner in TC3600 makes a 101 rejection, they aren’t going to withdraw it unless told to do so by the Board.

  13. Mark Nowotarski August 5, 2016 8:57 am

    David R. @10.

    The PTAB is, in fact, making new grounds of rejection under Alice. See:

    12396301
    11455556
    10651537
    11986967

  14. Mark Nowotarski2 August 5, 2016 1:42 pm

    Curious @12,

    Your comments inspired me to take a look at recently issued patents in the business method art units to see why at least some examiners are withdrawing 101 rejections. Here are a few examples:

    US9378492 System, method, and computer program for automatically resolving non-sufficient funds (NSF) errors in a network

    The Applicant amended the claims to include substantially more. The Applicant added the limitations of a payment gateway interface, top-up interface, and third party top-up system…

    US9361649 System and method for a trading interface incorporating a chart

    The amended claims include limitations that are significantly more. The limitations include: where the at least one column is configured for establishing a trading strategy…

    US9396469 Communication terminal and communication method using plural wireless communication schemes

    Examiner agrees with Applicant’s statement that ” … These meaningful limitations placed upon the application of the processor for performing selection of the wireless communication schemes show that the claim is not merely directed to performing an abstract idea on a computer alone…”

    I commend those examiners who are giving clear reasons why applicants have overcome a 101 rejection. It would be wonderful to see more.