The PTO Paradox: A Gatekeeper Mired in the Past

By John White
January 12, 2011

Gene and I are true believers in the PTO and its mission. What this means, for me anyway, is that the PTO is given the benefit of the doubt for whatever it is they are attempting. I do not presume ill motives. We are mindful, however, that not everything is perfect about the PTO. Some rules and the implacable enforcement thereof, drive any sane practitioner to the edge. But, at the moment, the trends are favorable.

One ongoing trend, however, that defies resolution is what I call the PTO Paradox, which describes the nearly unbelievable scenario whereby the U.S. innovation agency (i.e., the PTO) is well behind the curve when it comes to technology solutions that can and do streamline massive, document intense review activities.

When I was an Examiner in the early to mid 1980’s, the PTO was relying on shallow wooden drawers (shoes) of hand annotated paper in dimly lit rooms as the primary search resource to support examination. The files consisted mostly of US patents, but some arts had considerable foreign reference materials and non-patent literature as well. Older experienced Examiners had their own private prior art digests. Contract human re-filers were employed to maintain the integrity of the search materials. A missing reference rate of around 7% was the order of the day.

In some areas of technology, chemical mostly, the PTO had a thing called a modem (300 baud!) attached to amazing databases that could, with training, be used on occasion. But, for the most part, the PTO in the 1980s operated as it had for the previous 150 years. The big change while I was there was the increasing use of “form paragraphs” and “word processing” to prep office actions. The really forward leaning examiners had typewriters and whiteout on their desks! And so it was, the insurmountable PTO Paradox, to wit: the gatekeeper of the technology of the future hopelessly mired in the technology of the past.

Has it changed? Yes and no. The filing of papers has changed considerably with the advent of EFS-Web. The search rooms are gone (as is much of the art unit camaraderie and cohesion), and examiners are confined to offices with little contact person to person for tips and help. The searching is done using Boolean operators and other basic search techniques. Examiners fight their way through a 100+ page specs and drawings, scan endless claims, and do the best they can. The problem is that the amount of reference materials to sift has exploded as the PTO has gone electronic (and applications are published). Since my Examiner time, around 2 more million patents have issued; an increase of around 50%. Now, add in published applications!

Sure, an Examiner can use scanning functions to find words and phrases in cited references and patch together an office action, but as a recipient of these many actions, oft times a mere careful read of the citation shows how out of context the cite is and how faulty the rejection is under any reading of KSR. Too often, it just doesn’t add up. But, I do not believe the Examiners intend to do a poor job, anymore than I intended to do a poor job when I was an Examiner. The fundamental problem is one of time and tools. Time varies art to art and grade level to grade level. It is never what any reasonable person would expect is the time that should be allotted to such a complicated review process, but that is the reality of life for Examiners at the Patent Office. But what about tools? Surely they must have gotten better, correct?

Sadly, the Patent Office does not have the latest and greatest search tools at their disposal, hence the PTO Paradox. The agency tasked with maintaining our repository of innovative endeavors, the agency responsible for reviewing those innovations to reward that which is unique with a patent, is hobbled by sub-par information infrastructures to the point where they must rely on Google to digitize information for free. See USPTO and Google to Make Patent & Trademark Data Public and PTO Lays Out Ambitions 2011 Agenda at IPO Conference. By any honest assessment the PTO, which should be the innovation leader, is using outdated technologies.

I believe it is time for the PTO to jump aboard the ship of the future and use document and data search techniques now being employed in the litigation and national security arenas. Many tools (software approaches) exist that multiply effort and get smarter with each go around. I believe these tools should have a place at the PTO. Search techniques that build on what others have done and that search not just publications, but file histories as well, would give examiners a leg up when trying to assess patentability and truly understand what references can and should be cited to demonstrate. Machine translation of foreign language art would also be very useful. The abstracts just do not provide enough for an Examiner to go on for foreign references. And, in many areas, foreign art is the best.

Sure the PTO needs to solve its mundane technology issues; moving applications in/out and round about. However, it also needs new technology and focus to solve problems that simply did not used to exist, but now occur routinely. The private sector is developing solutions and it is time for the PTO to be in step with those solutions instead of existing in the – PTO Paradox.

The Author

John White

John White John White is a US patent attorney and a patent lecturer. He is CEO/Managing Director of www.PCTLearningCenter.org, and he is also the principal lecturer/author of the PLI Patent Bar Review Course, a course that he originally created in 1995. By now, John has personally taught close to 65% of all practicing patent attorneys and patent agents how to successfully become admitted to the Patent Bar. John has also taught numerous US Patent Examiners at the United States Patent & Trademark Office (USPTO) in the “Law and Evidence Course” necessary for them to advance to Partial Negotiation authority as Examiners. John serves as an expert witness in patent litigations and is regarded as a leading authority on patent practice and procedure. He also maintains a select patent practice, Berenato & White, and also assists start-up technology companies increase and monetize their patent portfolios through his affiliation with SorynIPGroup.com.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 15 Comments comments.

  1. Anon January 12, 2011 7:47 am

    A missing reference rate of around 7% was the order of the day

    How do you measure what you do not know?

  2. Public Searcher DIP January 12, 2011 9:05 am

    John,

    The problems of the PTO technology gap for patent searching are compounded by a lack of training in how to use the tools they do have and poor execution in setting up those tools.

    Example 1 – The PTO has added the Derwent World Patent Index which is one of the premier private sector databases to their searchable databases at significant cost. But they have no way to combine queries in their standard databases (US patents, US apps) with their queries in the DWPI. This leads to duplicate results for all text based queries which leads Examiners to turn off the DWPI database out of frustration (as related to me by a number of Examiners). Additionally, the Index part of the database has been stripped out of the data which eliminates a very important means of using this data. (Indexing is a parallel system to Classification.)

    Example 2 – The PTO has entered a partnership with the EPO to work on a combined US Classification and European Classification (ECLA). While I applaud this move; the rank and file Examiners must be confused. They have no knowledge of the ECLA system because they have absolutely no way to search it. (As a professional searcher, I can tell you that for many art units, the ECLA Classification provides more focused search results.)

    Example 3 – The PTO has absolutely no access to non-US art from before 1970. All those hundreds of drawers containing fantastic German motors and French bicycle patents from the early 1900’s that Examiners used to use as prior art have been removed and nothing exists to replace them. The EPO’s public website provides better access to these references than any system sitting on the Examiners desktop.

    Example 4 – This one is a bit anecdotal based… The PTO Academy does not actually teach how to do basic searching and apply Boolean logic. I’ve reviewed thousands of file wrappers with documented search strategies and employed dozens of former examiners and their lack of understanding of basic search logic is astounding. I’m actually quite impressed that they find anything of relevance at all with the strings of commands they utilize.

    Even with all that knocking on the PTO, I do agree that they want to do good. Even with all the faults of the computer system the Examiners use, it is still head and shoulders more useful than any of the on-line tools for which we on the outside pay thousands of dollars. Due to their direct access to image files, US examiners can fully review hundreds of references in the time a person on the outside can review a few dozen. My gripe is that they do a poor job of identifying the proper hundreds of references to review!

    Thanks for the article John.

    Public Searcher DIP

  3. Public Searcher DIP January 12, 2011 12:36 pm

    John,

    One last note. You say “Since my Examiner time, around 2 more million patents have issued; an increase of around 50%. Now, add in published applications!” – This is true if we limit Examiners to reviewing only US published documents (which they like to do!). The reality is that the volume of art which must be considered has risen from 5 million US patents in the mid-90’s to over 10 million US patents and published applications today. On top of this, over 40 million non-US published patent documents have become readily accessible by text searching and classification searching to US patent examiners. So the true increase is an order of magnitude, or a 1000% increase in the volume of art that needs to be efficiently parsed.

  4. Mark Nowotarski January 12, 2011 2:55 pm

    What is the Chinese patent office up to? Since they don’t have a legacy, perhaps they are jumping straight into new technology.

  5. john white January 12, 2011 4:19 pm

    Public Searcher: Thanks for the excellent feedback. John
    Anon: the 7% rate of missing references was the stated rate by the PTO for that era.
    By the way, it is somewhat more than 3.5 million new patents since I examined (1984)!

  6. Anon January 12, 2011 5:03 pm

    Thank you John,

    I realize that you received the information from someone else, but my question still stands – how do you measure what you do not know?

  7. Gwen January 12, 2011 10:04 pm

    ” how do you measure what you do not know?”

    The PTO had a list of all patents, including originals and cross references, classified in each class and subclass. The missing reference rate was determined by comparing that list with the paper documents actually in the shoes for that class and subclass. Active subclasses always had missing documents because examiner’s removed documents from the shoes while writing their Office actions and were not returned until copies had been made for the file and sending to the applicant. The 7% figure was the low end. The reported high end, I think, was closer to 20%.

  8. John Anderson January 13, 2011 8:38 am

    I’m a techologist / inventor and not a lawyer. Would anyone care to list some of their favorite tools for such searches other than google? ( They don’t have to be free.)

  9. Public Searcher DIP January 13, 2011 10:30 am

    John A. –

    Follow Gene’s suggestions on this website to “DIY”. Then acquire the services of a patent attorney and use a professional search service with which they are affiliated if you want further searching (the top shelf searchers do not work with individuals unless you catch them on a generous day). For listings of search tools, go to the PIUG.org wiki site (a neutral industry site) or the Intellogist site (owned by a provider, but much better information layout).

    No search tool is the best. Every single one of them, free or expensive, has strengths and weaknesses. As professionals in the biz, it’s our job to know those pluses and minuses for which we charge the big bucks!

    Good luck.

  10. Anon January 13, 2011 11:17 am

    Gwen,

    That is only a partial answer, because the “universe” of what is to be searched is more than just what is in the shoes (e.g., think publications, think foreign patents). There is no way to come up with a percentage when you simply do not know what you don’t know. Any such percentage needs to be clarified as to what that percentage actually means. And that is not what is actually being claimed.

  11. Drowning in baked beans January 13, 2011 1:29 pm

    “I do not presume ill motives.”

    Perhaps a reasonable assumption now that a man named Dudas is gone.

  12. scrappy January 13, 2011 6:03 pm

    Anon, the 7% missing reference rate meant 7% of what was supposed to be in the shoes wasn’t in the shoes. The only thing you “didn’t know” was which references were missing on any given date (because your buddy down the hall had pulled them from the shoes for the case he was working on, and they hadn’t been returned there yet). Really, it doesn’t get any simpler than that.

    The contractors’ “integrity checks” only checked for missing U.S. patents. Foreign classification was a hodge-podge of what the “classifiers” determined should be in the shoes (maybe it was right 50% of the time), and how examiners reclassified those foreign (by writing in ink over the official classification sticker applied by the classifiers). No record was ever kept of examiner reclassification of foreign references (or the foreign digests made by some examiners). So when we went to computer with EAST (which still lacks most pre-1976 foreign art) around 2000, the classification of a lot of the older or reclassified foreign art (as well as literature that the examiners had placed in the shoes) was effectively lost. (The foreign classification at the USPTO stopped in 1994, so EAST still has no U.S. classification for recent foreign patents.)

    Thankfully, the older foreign art is still available (and very well-classified) at e.g. Esp@cenet.

  13. Anon January 13, 2011 8:14 pm

    Thanks Scrappy – that’s an answer I can put stock in. So the actual phrase used should have been “A missing patent reference rate of around 7% was the order of the day.

    That would have avoided my whole line of questioning.

  14. patent litigation January 17, 2011 6:42 pm

    Isn’t it difficult for the USPTO to upgrade its tools, materials, and training, when Congress continues to siphon off the agency’s revenues via fee diversion? Or are you saying that the PTO’s main problem is not underfunding, but rather mismanagement?
    http://www.generalpatent.com/media/videos/patent-suits

  15. Anon January 18, 2011 7:32 am

    I think the answer would be a little of both.

    Yes, siphoning hurts – but it only hurts to the extent that the amount siphoned is that amount over budget.

    The Office should be doing what any business manager in a like situation would do – inflate the budget side of the equation. What was there to stop the Office from including in its budget the necessary line item of maintaining/improving their tools?

    You do not make the shots you do not take.