Suggestions for Fixing the US Patent System

By Gene Quinn
July 30, 2009

In order to jump start a constructive debate I throw out the following nine suggestions that would, in my view, assist in solving the patent crisis that we are in; a crisis that could easily lead to the irrelevance of the US patent system as a whole.

1. Revise the Examiner Quota System

This is not the first time I have suggested this, and others have as well, but as we all know, and the Patent Office should know, a number of Examiners abuse the entire process in order to make their numbers. Examiners will require the filing of an RCE all for the purpose of disposing one case and then getting an easy clearance.  I do not blame the Examiners for finding out ways to manipulate the system, the blame lies squarely on PTO. This is a problem that predates this administration, and likely predates the previous administration as well.  Nevertheless, this problem must be solved. I personally would do away with a quota system and implement a quality based bonus and retention plan.  I believe the Patent Office has started encouraging issuances and late interviews, but until the quota system is revised there will be abuse and that just raises cost for applicants and delays the issuance of a patent.

2. Give Examiners Adequate Time

While we are revising the quota system we need to keep in mind that if we want high quality patents examiners should be given adequate time to examine a case. In any technical field an estimate per application can and should be made. In the event that the Examiner feels that additional time is required for one reason or another the Examiner should then request such permission from his or her supervisor.

3. Move to a Fee for Service Model

It was astonishing for me to learn that the Patent Office does not believe we have a fee for service model. They charge more for large applications, more claims, multiple dependent claims, extensions of time and more. You name it and the Patent Office charges for it. The a la carte system of fees is even a bit ridiculous, particularly when they change them insignificantly up or down every 6 months. The Patent Office view is that because 70% of their funding comes from maintenance fees they do not need to do more work on larger applications, even though they charge more. But now with the prolonged decrease in allowances maintenance fees will not provide the revenue needed.

Every application gets the same consideration, which is very egalitarian. Unfortunately, for better or worse nothing in the U.S. legal system is egalitarian, and the patent system is not egalitarian either. The more money you have the better representation you get, the better patent you get and there is just nothing that can or should be done to change that. Therefore, if the Patent Office needs to provide more time to examiners and hire more examiners the way to do this is to charge a fair price for the amount of work that is required by an application.  And rather than starting a Deferred Examination program why not try the reverse, start an Immediate Examination program for the payment of a fee.

4. Move to Regional Patent Offices

I have written about this before, but it recently came up in a discussion I had with someone at the NAPP Annual Meeting.  As only the federal government could do, they built a brand new Patent Office building that wasn’t large enough even as of the day it opened. As sad as that is, the inadequate planning presents opportunities. The main corporate headquarters for the Patent Office stays in Alexandria, Virginia. Then rather than the stay at home work program, which reportedly has Examiners sometimes conducting interviews with barking dogs and whining children in the background, we move to regional Patent Offices. This has enormous benefit for multiple reasons, but first and foremost is the ability to hire more people will better skills. Let’s face it, there are only so many adequately trained and educated people who are willing to live within commuting distance of Alexandria, Virginia. The price of living and the traffic alone make choosing a career as an Examiner exceedingly difficult these days even though Examiners are paid very well by government standards.

Additionally, by locating Patent Office strategically around the country Uncle Sam could actually participate in the revitalization of certain communities.  With the unemployment rates in California and Michigan, a regional Patent Office in both places, and maybe in others, would not only be wise, but it would also be good politics.  When was the last time the wise thing also made political sense?  Oh, right, never.  Sorry.

5. Privatize the Patent Office

I am not sure I like the idea of a completely privatized Patent Office, but it has always struck me that this is an Office that just screams quasi-governmental corporation. I know all the problems with the Post Office, but on some level isn’t it rather remarkable that they can actually get that level of mail straight as accurately as they do these days? Additionally, the Smithsonian seems to run well. In fact, I would say that the only parts of government that year after year really run well are those that are not run by the government.

6. Alter or Eliminate Rule 56

I have been beating this drum for years.  We should do away with Rule 56 altogether… in the name of patent harmony!  OK, those who know me know that I think patent harmony is a bunch of bunk.  Whether folks like it or not, the US is the dominant market so us harmonizing to meet the demands of others is just silly.  Nevertheless, I am always willing to harmonize when we adopt things from other countries that make sense and are improvements on how we handle things, sadly that doesn’t seem to be often, but I digress.

Other Patent Offices around the world do not have the same or similar requirement to disclose prior art, yet they manage to function. Eliminating Rule 56 altogether would certainly be better than what we have now. If Rule 56 is not eliminated then it should be altered to more directly approximate a fraud test, and Congress MUST enact Rule 56 so that we can actually bring harmony to the PTO view and the Federal Circuit view, which is horribly contradictory.  When Congress does enact rule 56 (see the optimism) inequitable conduct should be found only when there is evidence sufficient to demonstrate an attempted fraud on the Patent Office, and fraud in the classical sense, which means it must be plead with specificity.

I would also do away with materiality completely. After all, aren’t the Examiners supposed to do their own independent review of materiality anyway?  But wait, what if some bad acting patent practitioner provides thousands of references?  See point 3 above.  Fee for service answers so many problems.  I can’t be the only one that sees that, am I?

7. Make the File Wrapper Inadmissible

One of the problems that presents itself during prosecution is the reality that everything we do say can and will be used against our clients in the event that something valuable has actually been invented. I would like to see legislation enacted that will either completely eliminate, or at the very least limit, the ability to use anything in the file wrapper during litigation. In the event that there is not a complete elimination then use of the file wrapper, which could still be discoverable, would be limited to those situations were there is a fraud on the Patent Office, with fraud not being defined by materiality, but rather by making intentional misleading, knowingly submitting false information, making arguments that are known to be scientifically or legally incorrect, or otherwise lying to the Examiner. In other words, “real fraud” not just inequitable conduct.

In my opinion, patents should be able to stand on their own, without need to look to the file wrapper. The net effect would be better, more complete applications that describe all facets of the invention. It would also allow for a more frank exchange of information between the applicant and Examiner. I also suspect that if this change were enacted many of us would have significantly fewer problems with requiring more by way of Information Disclosure Statements. But in exchange for more information this information needs to be inadmissible unless there is outright fraud.

8. Really go after Invention Scams

Every now and again the USPTO and/or the FTC will go after one of the hundreds of invention scams out there preying on independent inventors. Everyone knows, however, that there is no real concerted effort to stop these folks, and that remains true even after the PTO revised the Unauthorized Practice of Law rules (see Rule 11.5) specifically to stop scams. We all know who they are, we know where they operate and the PTO had broad new (and unused) powers. They even advertise on TV, yet all we can get is government action once in a while and no action under Rule 11.5? Why is that? How can that make sense?

9. Write rules & regulations that directly address abuse

There are attorneys who abuse the system, there are applicants that abuse the system, and there are examiners that abuse the system. We all know that there are bad actors in any group of people, and these bad actors give the rest (and like vast majority) of group members a bad name. Rather than implementing rules and regulations that impact everyone, how about we try and write rules that solve the problem directly.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. 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 17 Comments comments.

  1. Examiner #9 July 30, 2009 2:09 pm

    Agree with everything except #6 (well I don’t really have an opinion on #7) .

    Especially #3, it has always seemed ridiculous that allowed patents, subsidise bad patent applications. One of the first fees I would change is adding an issuance fee to every application, as it wouldn’t increase the cost of obtaining a patent (unless RCE’s were filed) and could single handly pull the PTO out of the defeceit.

  2. Gene Quinn July 30, 2009 2:20 pm

    #9-

    Why do you object to altering or eliminating Rule 56? What are you worried about? I would like to know so I can consider it and continue to revamp my suggestions. I think I have an idea, but would like to hear from you.

    Thanks.

    -Gene

  3. Mark Nowotarski July 30, 2009 10:46 pm

    5. Privatize the Patent Office

    How about Prof. Duffy’s idea to “Demonopolize” patent office http://bit.ly/6Czx9 Post Office got better once they had competition (e.g. Fed Ex)

  4. New Hire July 31, 2009 6:51 am

    “Additionally, the Smithsonian seems to run well.”

    Yikes… I have to disagree here. The increasing private influence over the Smithsonian over the past 10 years has resulted in mismanagement, corruption and all manner of controversial decisions. The PTO already contracts out services such as searching, and this seems to work well, but I’d be very cautious about turning its core government function of administering law over to the private sector.

  5. Ram July 31, 2009 7:37 am

    #7 Does not seems to be a good idea…..

    making File wrapper inadmissible is just like hiding facts from common reach. Once the patent is granted and made available for public…. the theory and history regarding the patented matter must be available for public inspection. Also, more and more Patent Offices around the world thinking of making the file histories available for common people.

    I would have written couple of more comments here….but the theme is…… not everybody will agree with this point.

  6. Alan McDonald July 31, 2009 7:43 am

    I can’t agree with #7, unless you are willing to eliminate the presumption of validity in litigation.

    It’s hard enough now to get a jury to overturn “the fine work of dilligent government experts”. If you can’t even show how bad the prosecution was (not fraud, just inept), what chance is there.

  7. Paul F. Morgan July 31, 2009 9:25 am

    Gene, to answer your above question, altertering or eliminating Rule 56 would have not practical benefit, because the CAFC has specifically held that they are not bound by Rule 56 [as with any other PTO rule] in making inequitable conduct decisions. The PTO itself rarely ever directly enforces Rule 56. It is extreme, inconsistent, CAFC panel decisions on inequitable conduct, not Rule 56, that drives and enforces extreme disclosure duties and concerns on applicant attorneys trying to avoid getting unenforceable patents and malpractice claims.
    What is needed is another CAFC en banc decision reigning in some of its own panels, or corrective legislation. But entirely eliminating inequitable conduct defenses to patents is completely politically unrealistic. [Just imagine, for example, the media and public uproar over the judicial enforcement of a major drug patent obtained by deliberately witholding material prior art or by material missrepresentations. ]

  8. New Here July 31, 2009 10:56 am

    On the subject of rules, their impact, and the system as a whole:
    Litigation at it’s best offers nothing to “innovation”, when it’s a definition of “innovation” that is
    the “evidence” for examination, then to litigate upon. The term prior-art can serve as a definition making the patent examination process problematic, because the challenge being, to match with, then compare existing patent claims with claims within patent application(s). Both of these steps (match & compare) are critical in themselves, as the language of applications claims and claims of existing patents collectively, are written within the inventor’s own definition of “innovation”. A “grand definition” is not a solution, as the problem question is: ‘Whom is it you say knows all innovation with the right to define it’ ?. This question is important, because it can kill ideas and close doors. The examination process, not the people, not sustainable to offer clear determinations base on the number of variables in the language of not just the claims, but the objective(s) written within them as well. “innovation” though defined, is just as much a concept as any other, so, in talking about “innovation” we should be damn sure that with or without definition, that the right to think create and share is alive, because if not, the patent system will close it doors. Odd, the idea “innovation”, and it’s claim(s), when in schools across the world people learn from other people direct or through books, information becomes a part of each person taken with them to other places to create with and share; I just can’t see how so much information over the past say 200 years, has not made it’s way to so many that any claim to “innovation” is moot.

  9. yapex July 31, 2009 12:05 pm

    examiners: apparently you can send in suggestions for improvements as per memo below. are we getting other time for providing feedback? 🙂

    ===

    To: Patents Employees

    From: Internal Communication Enhancement Committee (ICEC)

    Date: July 1, 2009

    RE: Suggestion Boxes

    The Internal Communication Enhancement Committee (ICEC) is seeking ideas and feedback from all Patent employees on methods to improve communication as well as other suggestions regarding general improvements that could be made. ICEC is a part of the Patent Strategic Human Capital Team. ICEC’s mission is to foster and facilitate strong communication practices that enhance vertical and horizontal communications throughout the Patent Business unit. To achieve this mission, we hope to enhance communications between the different levels of management and staff within the Patent business unit. This can be achieved by receiving input from you!

    Communication among all levels of managers and employees is an issue that is often cited by Patents personnel as an opportunity for improvement. In an effort to improve communications and to provide an outlet for employees to safely express their ideas, ICEC is supplying employee suggestion boxes.

    Employees are able to provide feedback using the suggestion boxes provided in the lobby areas of Jefferson, Randolph, Knox, and Remsen buildings as well as through the e-mail PatentsStrategicHumanCapitalPlan@uspto.gov. The suggestion boxes will be accessible only for a limited period of time, from July 1- July 31, 2009. The responses to the suggestions will be provided in a timely manner via the ICEC team. If anyone would like to receive an individual response please provide us your name, e-mail address or telephone number.

    We hope you will take a minute to submit your suggestions on how Patents can improve its communication efforts and other general improvements that could be made.

  10. Gene Quinn July 31, 2009 1:41 pm

    Ram-

    So why shouldn’t a patent stand on its own merits? I would have no problem opening up the file wrapper if fraud can be proved, but inequitable conduct under the Federal Circuit view is not about fraud. It is a fraud theory that the Federal Circuit allows to be plead as a defense without any facts whatsoever.

    -Gene

  11. Noise above Law July 31, 2009 4:44 pm

    Once again, Alan McDonald puts forth his crusade against the presumption of validity and once again I am compelled to disagree. Alan, I keep putting forth that the presumption of validity is an integral part of what it means to have a patent, and you never seem to answer that. You continue to conflate a separate issue (examination quality) with presumption of validity. The answer to examination quality (or lack thereof) is NOT to simply accept that quality cannot be obtained and do away with the presumption of validity. As mentioned previously, you might as well simply do away with the patent system altogether and have a registration system without any examination (you would definitely get rid of the backlog problem).

    As for Gene’s suggestion on item 7, I am inclined to disagree. I view the file wrapper as part of the written record, of which (per 37 CFR 1.2) any action by the Office will be based exclusively on. As that written record serves as the basis of the Office’s actions, it should be an open record once the patent issues.

  12. Ram August 2, 2009 11:33 pm

    Gene-

    I am agree with you on “A patent should stand on its own merits”. However, my emphasis is more on availability of information to public. We all understand that PTO is running short of Experts, Manpower, money etc. etc. …… and since the examining part is more and more centric to one or two examiners, there are more chances of errors in it, ……. which can be only reveled if information will be screened by more and more eyes and presented in-front of decision makers.

    Something wrong will always be wrong………. whether u make it admissible or not. So i guess it would be better if we make it admissible 🙂

    Moreover, i am also agree with “Alan McDonald” (comment no. 6)

    -Ram

  13. Alan McDonald August 3, 2009 8:01 am

    I’m all for a registration as opposed to an examination system if it means that I get an even chance to knock out a bad claim in whatever forum is chosen for the fight instead of having the deck stacked against me to start.

    Go ahead and give out worthless pieces of paper and let’s see someone try to enforce them.

  14. Noise above Law August 5, 2009 12:07 pm

    Gene,

    Regarding #6, you may find the story posted at The 271 Patent Blog of particular interest:

    http://271patent.blogspot.com/2009/08/cafc-really-tightens-pleading.html

  15. OldTimer August 5, 2009 7:23 pm

    One workable revision to rule 56 would be an “opt-out” clause in which applicants could choose to opt out of the prior art disclosure requirements for rule 56 in exchange for paying a higher search fee to compensate the office for conducting a better search. The presumption of validity could be formally eliminated for applicants who opt out.

    Regarding privatization, Kappos could outsource examination to India. Then US multinationals could have their outsourced engineers in India filing patent applications written in India by outsourced patent staff and examined in India by outsourced patent examiners, culminating in a U.S. patent. A patent would cost about $45.00. This is Nirvana for big business!

  16. Noise above Law August 5, 2009 10:29 pm

    “The presumption of validity could be formally eliminated for applicants who opt out.”

    Hmm, pay more for a worhtless piece of paper….

    I could tell you exactly how many applicants would go for that: ZERO.
    Any practicioner who would advise to take that option would find their business eviscerated.

    “Kappos could outsource examination to India. ” – except for a little thing called BIS regulations.

    Oldtimer, usually you are a bit more on the ball. Not tonight.

  17. Dirk September 30, 2012 7:12 am

    Some more suggestions:
    – (Against trolls, non practicing units collecting patents and the use of patents by big company’s, collecting them and use them in an anti-competitive contexts) Every time a patent is sold or used by a third party, the time of validity should be shortened. A buyer has not the same rights as an inventor. He can not replace him fully.

    – An equivalent for patents to the FOSS community. Idea’s of Open Source are intensively copied. And that is no problem, as long as the license rules are followed, like they are some kind of common good. But copying them and at the same time attacking Open Source products with patent litigation, that is really unacceptable.
    The actual patent system is not usable for Open Source. That leaves the people working together on those products unprotected.
    There must be a way the global FOSS community can file idea’s and create some protections. Like everybody that uses those idea’s should not be able to start patent litigation against (other) open source products, unless that party first pays for the use of those idea’s an amount calculated the same way as the amount they ask in the litigation.

    – (Against non valid patents) Everybody who can prove a patent holder did not do proper prior art search can charge it’s prior art search costs to the patent holder.

    – (Against trolls, who one by one attack practicing units, collecting money for litigation ) Any patent holder should disclose all the parties who he is approaching and will be approaching in the next two years to receive payment for it’s patents. He still can request payment to others, not listed, party’s, if he can show he could not now of those party’s the time he was submitting the list.

    – (Against trolls, attacking one by one practicing units with dubious patents, counting on that they will give in to avoid litigation costs and risks) The same rule for litigation. All listed party’s can request to take part in the same litigation and work together.