Yesterday the United States Patent and Trademark Office announced the adoption of new, more comprehensive procedures for measuring the quality of patent examination. The new measurement procedures were crafted by a joint USPTO-Patent Public Advisory Committee (PPAC) Task Force after consultation with the intellectual property community and the public, and according to the Adoption of Quality Metrics document patent blogs were also reviewed for ideas, thus it would seem that the USPTO has left no stone unturned in an effort to find a better way to measure patent examination quality.
The new procedures measure seven diverse aspects of the examination process to form a more comprehensive composite quality metric. The composite quality metric is designed to reveal the presence of quality issues arising during examination, and to aid in identification of their sources so that problems may be remediated by training, and so that the presence of outstanding quality procedures may be identified and encouraged. The procedures will be implemented for fiscal year 2011.
In the past the Patent Office measured quality using only two measurements; namely the final rejection and allowance compliance rate and the in-process compliance rate. The final rejection and allowance rate related to a review of the correctness of the examiners’ overall determination of the patentability of the claims, while the in-process compliance rate reviewed the quality of the actions taken during the course of examination. There has long been the belief by patent examiners, and with more than a little justification, that they would have negative reviews that would hurt their standing if they allowed patent claims erroneously but no negative consequences if they were to reject all claims. This widespread belief was, in significant part, what lead to the abysmal allowance rate of 38% in January 2009.
The Kappos Administration recognized that the two aforementioned measurements relate to only some elements of quality, and have long been regarded as insufficient measurements of patent examination quality. Accordingly, a more comprehensive review will now take place to ensure patent examination quality. These seven aspects include the two previous measurements of quality, plus five new measures. The measurements include:
- The quality of the action setting forth allowance or final rejection of the application.
- The quality of the actions taken during the course of examination.
- The use of best search practices in the examiner’s initial search for prior art.
- The use of best examination practices in the first action on the merits.
- Trends in compact and efficient examination as reflected in aggregate USPTO data.
- The perceptions of applicants and practitioners as measured by surveys.
- The perceptions of examiners as measured by surveys.
The first two on the list above are the traditional measurements of quality employed by the Patent Office for some time. With respect to the remainder of the new criteria for evaluation, here is what will be measured.
Best Search Practices
The third metric is a detailed measure of the degree to which the initial search performed by the examiner conforms with the best practices of the USPTO. The first action on the merits (FAOM) search review will be performed by random sampling of first actions on the merits in applications currently undergoing examination. This review analyzes the examiner’s search in these cases, thus providing the first USPTO quality metric focused solely upon the Office’s initial search. Under this FAOM search metric, individual applications are assigned a score based upon their compliance with best practices at the USPTO. For example, recordation of an inventor name search, appropriate classes and subclasses, and consideration of the references in an applicant’s information disclosure statement will each accord points for that application.
Complete First Action on the Merits
The fourth metric is a detailed measure of the degree to which the first action on the merits in an application conforms with the best practices of the USPTO. The complete FAOM review will be performed by random sampling of first Office actions on the merits in applications currently undergoing examination, providing a similar analysis to the in-process review but in much greater detail. This review analyzes the Office’s action on a claim-by-claim basis. Review will be based on best practices including but not limited to: proactive use of interviews to resolve issues, propriety of all rejections, requirements (including restriction requirements), and objections, and compliance with statutory requirements, Manual of Patent Examining Procedure (MPEP) guidelines, and compact prosecution principles.
Compact and Efficient Examination
The fifth quality metric, quality index report (QIR), is a measure of the degree to which actions in the prosecution of all patent applications reveal trends indicative of quality concerns. For example, one of the factors in the QIR metric is an action reopening prosecution after a final rejection. This type of action has been identified by patent stakeholders as indicating an issue relating to the quality of that final rejection. While there may be specific circumstances in individual applications such that the reopening of prosecution is not related to a defect in the quality of examination, the aggregate number of actions reopening prosecution after final rejection reflects a measure of the general quality of final rejections. The QIR will take into consideration actions per disposal, the percentage of disposals that are not RCEs, the percentage of final actions not reopened, the percentage of non-final actions that are not second or subsequent non-final actions and the percentage of total restrictions not made on second or subsequent action.
External Quality Survey
The sixth metric, external quality survey data, is a measure of the degree to which the experience of patent applicants and practitioners reveal trends and issues indicative of quality concerns. Quantitative external quality survey data will be gathered through responses to posed questions requiring rating of the respondent’s experience on a numerical scale. To effectuate this measurement the USPTO will commission semi-annual surveys to ascertain applicant and practitioner perception of issues addressed by the composite quality metric. The surveys will request the applicant or practitioner to answer certain questions relating to their experiences over the prior quarter. Questions in surveys will also seek to ascertain an external perception of issues not addressed by any other factors, to thereby present a more complete representation of the patent process. Since communication between the examiner and the applicant or practitioner has been identified by patent stakeholders as playing a vital role in effective examination, survey questions will address whether the interview involved the presence of a negotiating authority and/or the inventors, as well as the extent of the examiner’s application of relevant standards and laws and the examiner’s overall preparedness for the interview.
Internal Quality Survey
The seventh metric, internal quality survey, is a measure of the degree to which the experience of patent staff such as patent examiners and supervisory patent examiners (SPEs) reveals trends and issues indicative of quality concerns. Quantitative internal quality survey data will be gathered through responses to questions in which the examiners rate, on a numerical scale, their experiences over the prior quarter. Survey questions will inquire into the examiners’ experience with supervisory patent examiners, examination tools such as e-Red folder, and the effects of recent training initiatives such as examiner training on formal interviews. Surveys will also inquire into such issues as the quality of IDS filings and the extent to which applicants and/or their representatives effectively used interviews to advance prosecution. Furthermore, based on stakeholders’ input from the May 2010 roundtable discussions and written comments, this review will inquire into the examiners’ experience with the quality of claim drafting, such as over breadth, compliance with 35 U.S.C. § 112, second paragraph, and the extent to which claims are drafted to capture the concept of the invention.
“We are pleased to introduce these new quality measurement procedures, which will yield a more comprehensive view of quality than previous quality reporting methodologies,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “Achieving high-quality examination is always our top priority, and these new procedures will help us both address quality issues and identify and encourage best practices.”
The USPTO plans to periodically disseminate the results of each measure, along with the aggregate data used in their calculation to the extent practicable, on the USPTO website. These measures are expected to be reported at the middle and end of each fiscal year, although it is possible that some measures may be reportable on a quarterly basis.
In the press release announcing the new patent examination quality initiative the Patent Office pointed out that the implementation of enhanced quality review does not attempt to alter any of the standards for patentability.