Kappos Asks for Patent Bar Input on Reengineering the MPEP

David Kappos, USPTO Director

Earlier this month David Kappos, Undersecretary of Commerce for IP and the Director of the USPTO, wrote a blog article explaining his desire to revamp, revise and re-engineer the Manual of Patent Examining Procedures.  In this article Director Kappos openly asked for comments and suggestions, which is certainly a welcome change from the past. Everyone I know who has met Kappos believes that he is indeed interested in making the Patent Office better and welcomes ideas.  I had the opportunity to meet with him briefly and he and his staff seem very receptive to ideas and suggestions.  Kappos has been criss crossing the country speaking with inventors and members of the patent bar, soliciting ideas.  There is a clear sense that the US Patent System is in severe need of help, which is hardly a newsflash to anyone who has been paying attention.  It seems equally clear that Kappos and those in senior level positions within the USPTO understand they do not have a monopoly on good ideas.  This in and of itself would be a refreshing change, but coupled with the fact that Kappos is interested in tackling difficult issues and the future seems bright.

In his blog post from February 3, 2010, Director Kappos retold conversations he has had with so many who have asked him to devote some time and attention to the MPEP.  Kappos explained:

I agree that it takes too long to update the MPEP. And like other antiquated IT-based processes at the USPTO that have received public attention recently, it might not surprise you to learn that the authoring and source file environment we use to maintain and change the MPEP is an embarrassment.

It is sad, but the repository of US technology and innovation is woefully behind the times in many different tech areas.  Sadly the MPEP is but one area in need of an upgrade, but it is an important area because it is the manual that explains how patent examiners and the Office itself goes about its business and handles patent applications through the process.  Unfortunately, the MPEP is enormously redundant, internally inconsistent at times and nearly impossible to navigate, at least if you plan on relying on the Index.

Kappos goes on to wonder out loud what the Patent Office should do with respect to updating the MPEP.  He throws out these questions in order to jump start the debate:

Do we keep the process within the USPTO, perhaps adding a wiki for use in receiving IP community input as new versions come out?

Or do we open the MPEP development process up to real-time IP community input, so that each successive version is “community created” as much as possible?

And what if any new features do we include in the new MPEP? More examples? Greater integration of guidelines? Links to related USPTO online examiner education materials?

My personal view is one of extreme skepticism when it comes to using a wiki.  In the past it was pretty well universally understood that a wiki allows editors to write things in a way that presents a particular viewpoint, which may or may not be accurate.  Increasingly, there are those across the Internet who attempt to debunk what we all know is true by concluding, without support, that the wiki approach does not allow for biases.  Let that sink in for a moment.  So the collaborative efforts eradicated biases?  That is pure fancy, particularly when a word here or a word there can make all the difference.  It is also fancy because in a traditional wiki there are one or more editors who exercise editorial control.  If they don’t like what you wrote they delete it or change it, so there is always going to be a bias.

With a document of such importance the bias must be the bias of the Patent Office.  Patent Examiners will engage in activities as specified in the MPEP, and through Patent Examiners and other USPTO employees the United States federal government will be acting.  Therefore, the contents of the final document must absolutely be maintained by the USPTO.  That is the only way to ensure the patent process is fair, and if the patent process ceases to be fair there is appropriate redress.  Simply stated, I just don’t know you can provide a manual for USPTO employees to follow that was created through a collaborative effort of those outside the agency.

Having said this, there is room for using a wiki, no doubt, and the USPTO and every other government agency already uses a form of a wiki, which is enabled by the Federal Register through the solicitations of comments.  So to the extent input from the legal community is desirable it could and should build on what already works, which is the notice and comment process.

The process that would make the most sense to me would be to have the USPTO create a first draft of MPEP chapters.  To the extent there is interest the USPTO could solicit volunteers from the patent community to collaborate with members of the Patent Office responsible for drafting the MPEP.  When a suitable draft has been achieved it could be posted for comments and editing.  At this point in time it might be appropriate to explore using a wiki to allow interested individuals to edit the draft.  I think the ability to comment generally without editing should also be provided.  Then after the document has been open for comments and editing for a suitable period of time it could be taken down, returned the the USPTO professionals or collaboration partners and another draft created.  This iterative process could continue for a round or two, or more depending upon the merit and volume of the comments and edits.  But once the end of useful outside input has been achieved it should remain within the purview of the USPTO or some advisory panel blessed with the imprimatur of the Patent Office.

I also think it is critical that those who are allowed to edit in any fashion have sufficient familiarity with the patent process, relevant case law and the MPEP itself.  Allowing anyone to participate in any kind of wiki experiment would be a mistake.  The patent process is a complicated one, the MPEP is complex, redundant and intertwined and case law precedent can be all over the map.  For that reason it would seem to make sense to create a panel of experts with diverse experience in the industry to work with USPTO Officials to create drafts.  Then once the drafts are created only those who are approved to edit should be allowed to edit, with anyone being allowed to submit comments.

The comments to Director Kappos’ blog post also included some good ideas.  Among the ones I found most interesting were:

1. Courtenay Brinckerhoff: “I would like to see the MPEP be more balanced. Instead of merely providing rationales for rejecting applications, it also should include guidelines for when requirements are satisfied and/or when rejections should be withdrawn, perhaps with examples from Board or Fedeal Circuit decisions. For example, the current MPEP states that Applicant’s rebuttal evidence should be considered, but doesn’t provide any guidance on what type/quantity/quality of evidence is sufficient to overcome a rejection.”
2. James K. Poole, Esq.: “Dear Mr. Kappos, In almost 30 years of patent practice, both private and corporate, I have found the MPEP invaluable as a teaching reference and authority. I haven’t bought a paper version lately, but have found it very useful for reading sections to get not only specific answers but perspective, context and other angles. Use of the online version only has the same advantages and disadvantages as computerized legal research. While practitioner input could help to produce a better publication, I DO NOT recommend the wiki approach, as it would diminish the perceived reliability and authority of the MPEP. Providing links to USPQ cites (BPAI, TTAB particularly) and use of Federal Reporter cites as available would help; the latter would also be helpful in Office Actions, etc. Many of us find the USPQ inconvenient or expensive to access. Updates to particular sections could be noted at the end of a section. Thanks for seeking our advice!”
3. Don Champagne, Primary Examiner: “The MPEP is desperately in need of improvement, but let’s improve it systematically with a series of experiments. The Supreme Court’s Bilski decision will have a profound effect on examining practice in many areas. Perhaps commission three different substantive approaches to address how Bilski is incorporated into the MPEP. I personally would like to see the MPEP include hyperlinks to case law as well as links to commentary by people outside of the Office. The Wiki idea is intriguing and should be tested.”
4. John Meline: “We need something like a wiki with a deadline to freeze the next revision – something like releasing a new software version every few months. We need a system that accepts meaningful footnotes to current case law. We need a place for persistent comments from practitioners where the comments persist from version to version – but only if accepted by a moderator. The comments would not be part of the official MPEP but could be a source of tutoring practitioners and educating self-filing inventors. We need a moderator for each section of the MPEP, a moderator with real power to authoritatively accept and reject changes. We need to open up each section to comments, have deadlines for a new revision Overall, something that should get simpler over time, not more complex.”