Many readers will recall that on March 16, 2009, I posted an article titled Perspective of an Anonymous Patent Examiner. That post was and has been one of the most popular posts ever on the IPWatchdog.com Blog. Therefore, I was quite pleased to receive another e-mail from the same anonymous patent examiner over the weekend. Not only is this type of exchange good for readership, but it is refreshing to hear that there is at least one patent examiner who is concerned about where the Patent Office is heading and is interested in trying to fashion solutions. In reality, there are probably many patent examiners who are concerned about the current state of affairs at the US Patent Office. I know retired patent examiners and officials who have left the Patent Office share this concern as well. It is easy to lose sight of the fact that there are people within the Patent Office who do still care when the allowance rate is so low, application pendency is on the rise and there are reports that due to sham quality control some examiners have flat out stopped issuing patents altogether. In any event, what the anonymous patent examiner had to say this time will shock you no doubt. It seems that the budget crisis is so bad at the USPTO that the HVAC system will not be operating on Sundays any more. Unbelievable!
The anonymous patent examiner had much more to say than to simply explain that things are getting extremely bad at the USPTO. The examiner also presented an interesting idea with respect to how to try and handle the backlog. I like what he/she wrote, and this patent examiner would like to hear our thoughts. I am not 100% sure I would fashion a plan that is the same as suggested, but I have suggested something quite similar and I think it is an excellent place to start any debate on how to both get back to being the patent granting authority and address the backlog all at the same time.
So, without further ado, here is the message I received from the anonymous patent examiner:
I am writing because things have gotten worse at the PTO and I wanted to get your opinion as a Patent Attorney on a potential solution that I came up with. Last week a memo was sent to everyone in the office that indicated that the maximum overtime hours would be reduced for revenue generating, patent examining activities and that on Sundays the office will be not be using HVAC systems in all the PTO buildings at the Carlyle campus. These actions show how dire the PTO’s budget situation truly is. However, as an examiner who is truly interested in issuing quality patents and who converses with applicant’s and applicant’s representatives on a weekly basis to accomplish this goal, I present the following pilot program which would solve the PTO’s, applicant’s, and applicant’s representatives problems.
The pilot program would require the applicant to draft the invention’s entire application except for the claims, with or without the assistance of an attorney. After paying a higher fee in excess of the current base patent filing fees, the applicant has the option to have one independent claim drafted by an examiner who would potentially examine that patent. The one claim would be drafted only after the examiner has had a preliminary interview with the applicant, the applicant’s representative, or both and has completed a search of the prior art. The search is done in an effort to determine the line between the disclosed invention (as opposed to the claimed invention) and the prior art. Along with the one independent claim, the applicant will receive prior art that reads on the disclosed invention and an argument as to how the independent claim overcomes the prior art. Under this program the standard examiner production requirements would have to be halved or quartered due to the time required to do preliminary interviews and draft a quality independent claim, but the number of cases allowed per year by an examiner on this program would be higher than the allowance rate in the examiner core, because this examiner’s only job is to do quality searches based on disclosures and draft allowable claims.
This pilot program would put the burden of examination back on the examiner (unlike the Accelerated Examination Program), the burden of disclosing the invention as detailed as possible on the applicant (especially in pioneering and cutting edge inventions), and the burden of case prosecution mostly on the attorney (who still has to draft dependent claims, other statuory class embodiments and file other prosecution related documents). Additionally, instead of working with claims that are initially rejectable the applicant starts with an allowable claimed invention and works towards broadening the one independent claim’s language and considering what to claim in dependent claims.
Having drafted independent claims off the record for applicant’s and applicant’s representatives on several occasions, I know that this saves everyone time and leads to a better claimed invention. Furthermore, while the claims I’ve drafted are usually substantially specific, I’ve never had an applicant argue that I didn’t adequately describe their invention. Therefore, having seen claims that overcome the prior art of record both cited, known, and obvious and that overcome any 101 issues (regardless of the current interpretation of 101), it is a lot easier to arrive at broader claims that are still allowable.
I guess I just would like to know what your opinion of this program is and whether your colleagues would be open to such a program.
So let the debate begin. I will be following up with my thoughts and ideas over the next day or two.