Patent quality is much ado about nothing without better patent examiner controls

By Gene Quinn
October 22, 2015

sinking-businessman-failureBack in October 2010, the United States Patent and Trademark Office announced the adoption of new, more comprehensive procedures for measuring the quality of patent examination. The new procedures put in place in 2010 measured 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 Patent Office is also once again pushing a patent quality initiative. “The innovation that is fostered by a strong patent system is a key driver of economic growth and job creation.” That is how the United States Patent and Trademark Office began the Federal Register Notice announcing the new patent quality initiative back in early February 2015. “Quality is two-fold – both internal and external,” Deputy Commissioner for Patent Quality Valencia Martin-Wallace explained to me during a March 2015 interview. “We want to make sure we are delivering quality to stakeholders… patents that can stand up in the courts.”

Yet, somehow, despite all the talk about patent quality, several months ago it was learned that one particular patent examiner has fraudulently submitted time sheets claiming pay for over 700 hours of work never performed. Called only “Examiner A” in the report, the examiner in question also received extraordinarily low performance evaluations, receiving a reprimand for poor quality on nine (9) separate occasions. This leads to a very difficult question for the Patent Office – why was Examiner A even still working as a patent examiner?

While improving patent quality is a fine goal, the episode with Examiner A shows what many in the patent bar already know to be true. There are some patent examiners that produce very low quality. There are also patent examiners that struggle to speak and write in English. There are patent examiners who refuse to give serious and thoughtful consideration until the patent applicant has filed an appeal brief. These and other nuisance hurdles placed in front of applicants do nothing but frustrate the very purpose of having a patent system, which is to recognize and reward innovation. Worse, the public has already received the benefit of the bargain through publication of the patent application, so in effect what recalcitrant patent examiners are doing is unilaterally refusing innovators the benefit of their bargain after the value has been already provided.

While the overwhelming majority of patent examiners take the job very seriously, those that do not take the job of examining patents so seriously do real damage to the patent system they are supposed to be serving. They also do very serious damage to the reputation of all patent examiners and call into question the quality produced by the Patent Office.

The situation with Examiner A, however, focuses a spotlight on the inability of the Patent Office to get rid of patent examiners who are routinely cited for inferior quality. The existence of a patent examiner that continually produces inferior quality also fundamentally calls into question the Patent Office quality initiatives. Unless and until the Patent Office can address obstinate patent examiners and patent examiners who continually fail to meet quality expectations how can the Office truly address the problem? Frankly, talking about improving patent quality seems to be much ado about nothing, or perhaps akin to rearranging deck chairs on a sinking ship.

If the Patent Office cannot fire a patent examiner who is routinely cited for inferior quality then how can the Office seriously expect that any of their initiatives will do anything to increase quality?

[[Advertisement]]

Unfortunately, there may be very little the Patent Office can do about patent examiners who continually produce inferior quality. The federal government has an outdated civil service system that fails to hire the best employees, but instead only allows agencies to interview those who score the highest on a written application submitted through USAjobs.gov. Points are given for previous federal work experience or military experience, regardless of whether it is at all relevant to the job being applied for. Similarly, points are giving for minorities and those with disabilities, again without regard to job suitability. Thus, the perfect applicant for a position who has never been employed by the federal government, who is not a minority, and who is not disabled can and does easily score fewer points than someone without the appropriate background and training for a position.

Although it is not impossible, firing a federal employee who has gone past their probationary period is extremely difficult. “Very few federal employees — in the hundreds, not the thousands — are ever fired on the basis of poor performance,” said Paul Light, a professor of public service at New York University. Similarly, Don Kettl, a professor at the University of Pennsylvania, agreed: “The federal civil service is hamstrung by antiquated rules. We need to make it easier to fire poor performers.”

Obviously, the Patent Office is but one small piece of the overall federal government bureaucracy. That sadly means that there is little the Patent Office can do, aside from perhaps transferring poor employees to menial jobs, which is something that old time Patent Office employees say was done many years ago.

Still, it seems at least a little silly to be talking about patent quality and what the industry needs to do to provide better patent applications when the Patent Office is unable to manage its own employees. I’m in favor of patent quality, don’t get me wrong, but patent quality is only ever going to be as strong as the weakest link. The fact that Examiner A wasn’t even working and that he was continually reprimanded for poor quality speaks volumes about the safeguards in place to protect patent applicants.

Not being able to hire the best people, not being able to fire under performers, and not even knowing that an employee wasn’t working really makes you want to throw up your hands and say “hey Patent Office, fix yourself first!”

The end goal of any patent application is to obtain a patent, which is true whether an applicant finds themselves assigned to a patent examiner in an Art Unit that issues over 95% of applications received, or whether they find themselves assigned to a patent examiner in an Art Unit that issues less than 5% of applications received. Sadly, these figures are not exaggerations. There are Art Units that occupy both ends of the allowance spectrum, which is both hard to believe and evidence on at least some level that the senior officials and career management at the Patent Office are incapable of getting patent examiners on the same page. For an organization that is largely in the business of examining patent applications such disparate treatment of patent applications is simply unacceptable.

The deviation in allowance rates is so overwhelming between Art Units in the same Technology Center that the different treatment patent applicants receive is functionally discriminatory, if not discriminatory in a legal sense. Such different treatment by similarly situated patent applicants cannot be what the law is supposed to encourage, or even allow. If the concept of equal protection means anything it has to at least mean that applicants, some of who are direct competitors operating in the same or adjacent technology fields, have to be treated the same.

What is a patent practitioner to do when facing what seems to be an insurmountable hurdle, or in an Art Unit where patents simply are never issued unless the Patent Trial and Appeal Board (PTAB) orders the examiner to allow?

Answering this question is the central focus of a free webinar I will moderate on Wednesday, October 28, 2015, at 1pm ET. The title of the webinar is Enemies of Patent Prosecution & Strategies to Overcome Them. I will be joined by Bob Stoll, former Commissioner for Patents at the United States Patent and Trademark Office and current partner at Drinker Biddle. Also joining the conversation will be Chris Holt, who is Vice President of patent analytics at Reed Tech.

We will discuss using patent prosecution data on specific examiners and Art Units to craft a prosecution strategy that will maximize the chance of success while minimizing costs to the patent applicant. We will also further talk about various procedural mechanisms available, including the Ombudsman program, effectively using prioritized examination to force a matter forward, and strategies to streamline the appeals process for applications of particular commercial importance.

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 31 Comments comments.

  1. A Rational Person October 22, 2015 10:58 am

    Gene,

    I also think that much of the inconsistency in how applicants have been treated is caused by the Supreme Court and the Federal Circuit has been caused by the fact that, in the words of David Stein, “Over the past decade, many key legal tests of patent law have shifted from an evidence-driven technical analysis to evidence-free, subjective opinions.”

    On his blog USPTO Talk, David provides a helpful list of the new “smell tests” created by the Supreme Court and Federal Circuit to replace the more objective tests of the past:

    http://www.usptotalk.com/the-most-dangerous-problem-in-patent-law-unreliability/

    “35 USC 101: Is the invention “abstract?”

    35 USC 101: What claim language sets forth a patent-eligible statutory class?

    35 USC 112(b): When does a claim sufficiently “set forth and distinctly claim the subject matter regarded as the invention?”

    35 USC 112(f): What types of claim language invoke the means-plus-function claim form?

    35 USC 102: What is within the “broadest reasonable interpretation” of a claim element?

    35 USC 102: When comparing a patent claim with a prior art reference, which claim elements will be given their due weight and recited meaning – and which claim elements will be disregarded, dismissed as immaterial, or overgeneralized?

    35 USC 103: When can references from different fields be combined to meet the claimed invention?”

    With so many subjective, evidence-free ways to reject a claim, is it any wonder that treatment of patent applications is so inconsistent within the USPTO?

    As David Stein says about these smell tests:

    “These decisions are not resolvable according to evidence or objective rules. Rather, each issue is a ‘smell test,’ based primarily on the reviewer’s opinion. Vast differences arise in their understanding and application of these concepts arise among the 9,000 USPTO examiners currently making such decisions.”

  2. angry dude October 22, 2015 11:31 am

    What patent quality ?

    Many patents don’t teach anything useful at all, like that Mark Cuban’s patent (issued after first office action btw) previously discussed on this blog.
    There are tons of patents like that owned by apples and googles of this world
    – claiming future products and services but not disclosing enough information to make them (those companies don’t know how to make those things yet – they are just abusing patent system)

    Someone needs to restore sanity in US Patent system

    When examiner looks at a new patent application he should ask one question: does it teach any new and useful feature or process in sufficient detail so anyone skilled-in-the-art can reproduce it from patent application alone ?

    Under this basic test many patent applications will fail immediately, even before non-obviousness test is applied
    (e.g. Mark Cuban would never have his patent on “self-balancing” board which does not self-balance at all according to what’s described in his patent)

  3. Curious October 22, 2015 1:59 pm

    I believe the following metrics should be determined for each examiner:

    1) % of first office actions that indicate allowable subject matter
    2) after each final office action, the percentage of applications that were (i) subsequently allowed, (ii) appealed, (iii) received RCEs, and (iv) abandoned
    3) for final dispositions, what % of applications were (i) allowed or (ii) abandoned (RCEs do not count since an RCE is simply continuing prosecution)
    4) for original applications (i.e., not continuations), the average number of actions (i) before issuance or (ii) before abandonment.

    For APJs at the Board, they should be measured on percentage of applications (for decisions that they write) that are affirmed, reversed, or affirmed in part (101 rejections should be separated out from art rejections).

    With this information, you look for outliers. E.g., why does one Examiner have a 50% allowance rate when the average is 70%? Why does one Examiner average only 2 office actions before abandonment whereas another Examiner averages 5.5 office actions before abandonment? Some outliers may represent Examiners doing a really good job or a really bad job.

    By way of example, there are certain APJs at the Board that have a very low rate of reversing rejections. Over the short run, this is to be expected. However, when the same APJs have the same low rate of reversing rejections year after year, then there needs to be an explanation given as to why? Are they correctly applying the law (and everybody else is getting it wrong) or vice versa? While there will always be some variation from one APJ (or examiner) to the next, there is more variation present than what random distribution can account for.

    While we have a society that places great importance on “individuality,” this is not a goal when applying the law. Instead, the USPTO should strive for perfect consistency in applying the law. Inconsistent treatment of the same/similar issues will only serve to increase the USPTO’s workload and lead to greater dissatisfaction with the USPTO by its users. Patent attorneys will be more apt to fight if they see the same issue resolved differently across the USPTO than if the USPTO was consistent in reacting to the same issue.

  4. Night Writer October 22, 2015 3:27 pm

    I agree that recent case law has made examination worse. TSM and a very open 101 would vastly improve examination. We are moving to a system without laws. Alice is a witch test where it is up to the judge to decide if the invention is a witch to be burned. No laws makes everything more expensive and more corrupt. Merit starts to wane and corruption waxes. You need that litigator that knows the judges so he/she can convince them that this one isn’t a witch. I’ll bet Finnegan’s litigation docket took a giant leap when one of their own was appointed to the Fed. Cir. It shouldn’t have.

    Also, you’ll note that the SCOTUS cases never seem to have any thought of performing the analysis 600,000 times a year.

  5. Night Writer October 22, 2015 3:31 pm

    As one final point, you’ll note the constant harping towards a system like they have in Europe. We don’t want that. The European system is one that is not logically consistent. It is a giant set of compromises for the people/companies/countries with money and power. We want a country of laws. That is why America used to be so great. There were laws so if you knew the laws you could zoom to the skies. Now, not so much. Now you got to deal with the powers that be.

  6. Edward Heller October 22, 2015 3:46 pm

    Gene, I think it is very difficult to manage government employees regrading quality since it is all but impossible to fire anyone. Adjusting bonuses seems the only available tool.

    I would tie the amount of bonus money available to performance of a group in terms of quality metrics, and the patent office as a whole in terms of validity.

  7. Night Writer October 22, 2015 4:45 pm

    Actually it was Scalia that said that an all factors test is really an equity test. I think Alice is an equity test.

    Also, for quality: I think the number one way to improve quality is to improve searches.

  8. David Stein October 22, 2015 4:51 pm

    Complete agreement with everything written above. (And thanks for the quotes, Rational!)

    Curious wrote:

    I believe the following metrics should be determined for each examiner: …

    2) after each final office action, the percentage of applications that were (i) subsequently allowed, (ii) appealed, (iii) received RCEs, and (iv) abandoned

    Yes! Yes, exactly this. The PTO’s inability to measure examination “quality,” in any meaningful way, is due to its failure (or refusal) to use an available measurement: the actions that applicants take in response to office actions. When rolled up for an examiner’s entire docket over many applicants and cases, these metrics are a clear indicator of the examiner’s ability to put together office actions that squarely address the claimed subject matter.

    All of this can be captured in one word: persuasiveness – as in: is the examiner capable of persuading applicants that they are not entitled to their asserted claims – or do they routinely rely on unfair conclusions, like broadest unreasonable interpretation, and combining eight references to cover a single claim?

    I do not understand why the PTO is just blind to this rich source of data.

    Edward Heller wrote:

    I think it is very difficult to manage government employees regrading quality since it is all but impossible to fire anyone. Adjusting bonuses seems the only available tool.

    It is unbelievable that PTO management has adopted an examiner rating system where over 95% of the examining corps is “outstanding” or “commendable.”

    In this system, the examiners who are just barely above the worst 5% are given the exact same recognition as the top performers.

    How does this kind of system motivate examiners to work hard or strive to improve? The administration doesn’t even recognize such effort, let alone reward it.

  9. Anon October 22, 2015 7:56 pm

    The thing that I am most struck with is how absent any of this was from the entire build-up, passage, and post-passage discussions in Congress.

    The desperate lack of “quality” and actions related to what the Office can do within its own walls seems to be “championed” by a select and rather un-listened to few.

    Instead we DO get all the K-street noise, wreckage of a system that made innovation a top United States product (as all other products seemingly left our shores for lower cost factor locations elsewhere), and the pursuit of philosophical agendas that seem to perpetually denigrate innovation.

  10. Nelson Avek October 23, 2015 12:28 am

    Considering the patent quality and granting time, both the terms are tangled with each other. The patent quality is inversely proportional to the grant time. A good search takes more time which stretch the petition time.
    The collaborative search pilot programme by USPTO can be a major step in improving patent quality along with the petition time. By sharing the work and distributing the petition process, examiners can run their search more conveniently from both sides, thus returning with strong patent quality without investing too much time.
    That’s what my though is after knowing the CSP programme. The tendency right now is on the side of giving a patent and that’s what affect the patent quality.

  11. yet another Anon October 23, 2015 6:00 am

    At last! A post addressing the utter uselessness of much of the USPTO’s Examiner Corps! Good one! This is a topic that somehow seems to be avoided. The simple fact is that the USPTO is the most incompetent of the major patent offices, and on occasion trends towards the likes of some of the South Asian offices (which shall remain nameless…). It often goes beyond mere incompetency to downright dishonesty. You look at the arguments in an office action and you know the Examiner couldn’t possibly have understood the subject matter (assuming of course that s/he even read it in the first place). And these people are allowed to pass judgement in the world’s most important patent office! I don’t think I could ever be a US patent attorney, because I simply couldn’t sign off “Yours respectfully” to a large proportion of these clowns.

  12. Alexander October 23, 2015 9:18 am

    It is meaningless to suggest metrics without saying how they would be used. If you build a metric system based on avoiding appeals (i.e. “persuasiveness”) you will be baking in a perverse incentive to allow applications that should not be allowed. Without ADDITIONAL quality control steps, the system remains broken and biased. So rather than just pleading for the bias to tilt toward applicants, how should the USPTO determine quality of allowances and rejections?

  13. Night Writer October 23, 2015 9:22 am

    It disturbs me that Director Lee has not commented on the recent cases and how they make it harder to do prosecution. I attribute this to her lack of experience with prosecution before being put in charge of 6,000-8,000 examiners doing a job she had never done.

  14. A Rational Person October 23, 2015 10:01 am

    angry dude@2 wrote:

    “When examiner looks at a new patent application he should ask one question: does it teach any new and useful feature or process in sufficient detail so anyone skilled-in-the-art can reproduce it from patent application alone ?

    Under this basic test many patent applications will fail immediately, even before non-obviousness test is applied
    (e.g. Mark Cuban would never have his patent on “self-balancing” board which does not self-balance at all according to what’s described in his patent)”

    Does anyone have any insight as to why this often does not appear to be done for patent involving software and/or computer technology as part of the claimed invention?

    From my experience, most Examiners in the mechanical, biotech and chemical arts seem to understand that claims should be examined for satisfying the enablement requirements of 35 USC 112. In fact, in the biotech arts, many of the Examiners may, if anything, be overzealous with respect to issuing 35 USC 112.

    In contrast, in many cases with regard to the patents claiming inventions involving computer technology and/or software that invalidated by the courts for allegedly being “abstract” under 35 USC 101, the real problem with the claims at issue is that they do not appear to be enabled by the specification and drawings (see the Ultramercial patent, for example; the claimed invention involves providing a “media product . . . comprised of at least one of text data, music data, and video data”, but there is no description of a database that stores one of these products anywhere in the patent)

    Why are patent’s such as the “hoverboard” patent Mark Cuban licensed being issued with no 35 USC 112 enablement issues being raised during prosecution?

  15. Eleanor Meltzer October 23, 2015 10:37 am

    In essence, a patent is a recipe. We’ve collectively done a fine job of creating complexity and obfuscation around this straight-forward concept. Without ignoring management failures which lead to less-than-acceptable performers (in any field) maintaining their positions, the USPTO’s new regional offices may help the examination-quality situation. Why? Historically, the USPTO has had tremendous difficulty attracting patent-examiner candidates who are willing to move to the D.C. metropolitan area. With USPTO’s regional offices creating the possibility of working in other parts of the country, we’ll see if USPTO can attract a wider pool of examination talent.

  16. Curious October 23, 2015 10:40 am

    the patent office as a whole in terms of validity
    The problem with that is the Supreme Court’s continual moving of the goal posts (e.g., 103 with KSR and 101 with Bilski/Alice/Mayo).

  17. Curious October 23, 2015 10:42 am

    media product . . . comprised of at least one of text data, music data, and video data”, but there is no description of a database that stores one of these products anywhere in the patent
    You don’t have to disclose what is old, and if this language was in an original claim, it would be sufficient to enable those limitations.

  18. Curious October 23, 2015 10:46 am

    I attribute this to her lack of experience with prosecution before being put in charge of 6,000-8,000 examiners doing a job she had never done.
    The only people with experience being in charge of a large number of examiners are the directors of the tech centers — not my first choice for a Director. Also, examining applications is different from prosecuting applications. Not an entirely different skill set as there is some overlap, but there is still substantial differences.

    Frankly, I don’t have as much problem with Lee’s experience as I do with the anti-patent mindset she had going into her position.

  19. can't say October 23, 2015 12:19 pm

    With all of the talk of quality by the upper management at the USPTO their is one import issue missing. The examiner’s performance place is both defective and improper. It assumes that an examiner is “outstanding” in quality and the SPE must prove otherwise. The simple reason that “examiner A” was still working at the PTO is that the performance plan made it virtually impossible to be fired based on poor quality work. I would suspect that less that one non-probationary examiner a year is fired based on the quality of their work.

  20. David Stein October 23, 2015 1:35 pm

    anon wrote:

    The desperate lack of “quality” and actions related to what the Office can do within its own walls seems to be “championed” by a select and rather un-listened to few.

    Yes, exactly! It’s been deeply frustrating that the PTO’s approach to “patent quality” has been pursuing legislative changes to push applicants to write better applications… rather than using the tools it already has at its disposal to shape the process. But this improvement has to be intentional and directed – not arbitrary or capricious, like Dudas’s “examiners should just throw nine out of every ten applications in the trash” policy.

    Fortunately, we might be seeing some glimmers of change. I attended the USPTO / AIPLA “Partnering in Patents” session this week, and noticed a significant uptick in discussion from the PTO about improving the quality of examination. It’s not all on-point at the moment – e.g., that old saw of “examiner interviews need to be made complete matters of record” cropped up again – but just the shift in perspective was encouraging.

  21. Old Examiner October 23, 2015 3:02 pm

    As far as patent quality is concerned, I believe my comments which Gene highlighted some years ago still hold true –

    http://www.ipwatchdog.com/2009/04/17/an-old-patent-examiner-explains-poor-patent-quality/id=2651/

    Further, it is still my belief that a quality patent starts with finding the best art. Examiners can’t master their art while having to search subclasses with thousands of references. They also need to be trained by primary examiners or supervisors who have an in-depth knowledge of their art area. Too frequently, this isn’t the case anymore. Also, programs like COPA, where cases are shipped to examiners who have no knowledge of the art simply to expedite examination, aren’t a good idea. If the best art is in the case from the beginning, the prosecution will be expedited and the record will be clear.

    This issue also isn’t a one-way street. Quite often, lengthy prosecution is a result of an attorney or a client. Absence of IDS statements, broadly written claims because of no prior art search, etc. result in new searches when claims are amended and therefore new art. This leads to a final rejection, a subsequent RCE, etc.

  22. younger examiner October 24, 2015 8:23 am

    I second what Old Examiner says, especially the latter part. Just as there are incompetent examiners, similarly there are incompetent attorneys and agents. Sometimes attorneys will abuse the system which also slows prosecution and hardens each side.

  23. James Yang October 24, 2015 9:54 am

    the patent office needs to track the number of applications that should have been allowed but was rejected and not just the number of applications that matured into a patent but should not have been. it cuts both ways.

  24. Anon October 24, 2015 2:28 pm

    younger examiner,

    The Office can – and does – control the behavior of those appointed to represent applicants before it, to the extent possible.

    That quite clearly is not the point being stressed here. And in all truth, it should not be the point being stressed here.

    As an Office on innovation, the better path – the far better path – would be to be applying the most innovative business methods available and controlling what is easily the largest problem within the Office.

  25. Night Writer October 25, 2015 2:00 pm

    Eleanor Meltzer >>With USPTO’s regional offices creating the possibility of working in other parts of the country, we’ll see if USPTO can attract a wider pool of examination talent.

    The problem is simple. The PTO is like an engineering research group. Where do those get built? They get built in the boonies where an engineer’s pay can buy a house and good middle class living.

    Why in the world is the PTO in DC? It should be moved.

  26. EG October 26, 2015 9:30 am

    I too have personal experience with some patent examiners who are mediocre (or worse), but by and large, most patent examiners I’ve dealt with appear to take their work seriously, even if I don’t agree with the positions they’re taking.

    Because the huge amount of hiring that has occurred in the Examining Corps (up until about 2009 at the point of the Great Recession), there are two significant issues I’ve seen. The first is the greater number of patent examiners for whom English is obviously a “second language” which make telephonic communication, especially at interviews, very trying. When I commented on this issue a few years back to the AIPLA (when of was then a member), I was basically told that wasn’t a “politically correct” comment to make. May be so, but PC or not, it was definitely an issue and still is, even if the particular examiner happens to be highly qualified on the science/technology.

    The second is how young the Examining Corps has become, especially at the managerial level (e.g., the SPEs). Because the managerial level of the Corps is less experienced, what I see too often is the “blind leading the blind.” That especially shows up in the training the entry-level examiners seem to receive. Smarts in the science/technology are certainly important, but experience is a “process of accretion” and can only be gained over time, and having the Examining Corps be less experienced, especially at the managerial level, means these entry-level examiners receive less “real experience” training. And I might also say I agree with those, such as Night Writer, who question whether the current Director, who appears to have no experience in patent prosecution, can possibly “lead from top” on improving examination quality.

  27. Curious October 26, 2015 10:20 am

    When I commented on this issue a few years back to the AIPLA (when of was then a member), I was basically told that wasn’t a “politically correct” comment to make.
    A patent application is not a “technical” document. It is a “legal” document. In the document (and most particularly the claims), are words, the meaning of which MUST be properly interpreted in order for meaningful examination to take place. If an examiner does not have full command of the English language, this is going to be a serious problem when it comes to examination.

    Director, who appears to have no experience in patent prosecution, can possibly “lead from top” on improving examination quality.
    Patent prosecution is not the same as patent examination. Does the CEO of General Electric need to have experience in all the different products/services that GE provides? No. A good leader has to have a vision as to where he or she wants to take the organization. A good leader then needs to identify the people who will help him/her achieve that vision and give those people the tools/resources they need to achieve the vision. Put differently, Lee shouldn’t be the one doing the dirty work — instead, Lee should be identifying those that are capable of doing the dirty work (of improving patent examination) and giving those people the opportunity to improve the system.

    Lee’s vision (or perhaps directive from higher ups (whether it is the administration, Google, or both) is to make it harder for people to obtain patents in both the fields of biotechnology and computing. While Lee pays lip service to “patent quality,” every Director does the same (every head of every agency/organization whether private or public also does the same — pay at least lip service to “quality,” whatever that means).

  28. A Rational Person October 26, 2015 10:23 am

    Night Writer@25

    How many young scientists and engineers want to live in the boondocks today? If they are married, will their spouses want to live in the boondocks?

    If you want examiners to be in the at the USPTO, I would expect the USPTO to be located in a major city, as has been the case with respect to the regional offices.

  29. Curious October 26, 2015 12:32 pm

    If you want examiners to be in the at the USPTO, I would expect the USPTO to be located in a major city, as has been the case with respect to the regional offices.
    I agree on that point. If you are hiring new examiners with limited work experience (i.e., 20-somethings), then a major metropolitan area is where most want to go. Silicon Valley is one of the most expensive places to live in the country, but they still don’t have problems attracting talent.

  30. Dat evidence October 29, 2015 2:04 pm

    “There are Art Units that occupy both ends of the allowance spectrum, which is both hard to believe and evidence on at least some level that the senior officials and career management at the Patent Office are incapable of getting patent examiners on the same page. For an organization that is largely in the business of examining patent applications such disparate treatment of patent applications is simply unacceptable.”

    You are quite correct that such is evidence of that, and if you worked internally you wouldn’t need that evidence because such would be apparent from simply walking around a AU and talking to different signatories. However, the thing you have to remember is that signatory examiners get that wide wide wide latitude.

    “The deviation in allowance rates is so overwhelming between Art Units in the same Technology Center that the different treatment patent applicants receive is functionally discriminatory, if not discriminatory in a legal sense. ”

    What it actually is though is evidence that there is a whole bunch of “doing what you want” going on for primaries. Otherwise known as “arbitrary and capricious” action taking.

  31. superordinary skill November 4, 2015 11:19 pm

    As a 15 year Examiner, I wish to comment only on the idea that widely varied allowance rates within technology centers are somehow meaningful. TC 1700, nominally the chemical arts, has an incredible array of technologies under consideration by its Examiners….. technologies ranging from coating materials to fuel cell design to oil drilling compositions to washing machines to photolithography. Obviously, some of the technologies are far more mature than others and, thus, truly patentable subject matter in these areas is much more difficult to identify. Even within art units, a significant disparity in the allowance rates may be observed for much the same reason. Consider, for example, two Examiners in the same AU… one of whom mostly evaluates polyolefins and their compositions whereas the other perhaps makes patentability determinations on dendrimers derived from various precursors. The former could reasonably have an allowance rate 30%+ lower than the latter given the extent to which the polyolefin area has already been developed. Apple-to-orange comparisons are not useful. Some of the other metrics are perhaps more telling such as actions to disposal or cases reopened after appeal but even these have their shortcomings.