Director Lee’s remarks at IAM paint a PTAB patent owners simply do not recognize

By Gene Quinn
November 16, 2016

USPTO Director Michelle Lee.

USPTO Director Michelle Lee.

Yesterday, USPTO Director Michelle Lee spoke at the IAM Patent Law and Policy Conference in Washington, DC. A full copy of her prepared remarks is available on the USPTO website.

As I was reading through Lee’s remarks I became rather disenchanted. Frankly, the way Lee talks about the Patent Trial and Appeal Board (PTAB) makes me wonder whether she is referring to the same entity that I commonly refer to as the PTAB. Indeed, Lee’s remarks come across as if leprechauns are dancing across a magical rainbow in search of unicorns being ridden by fairies. It is a fiction that I am just not familiar with; a fiction that patent owners simply do not recognize to be true.

With this in mind I thought the best way to provide my thoughts and comments would be in the format of comments from the peanut gallery, or perhaps as a patent law equivalent to Mystery Science Theater 3000, which I do from time to time.  In order to differentiate my thoughts/comments from Lee’s prepared remarks, my comments are italicized, colored, indented and tagged with the IPWatchdog logo. I will also focus my comments on one paragraph in particular.

__________

LEE: These PTAB proceedings have proven a valuable check on patent quality, particularly in the later part of a patent’s lifecycle. At this point, it makes sense to bring greater resources to bear if there are questions about a patent’s validity.

MY TAKE: If the PTAB has been a valuable check on patent quality then it is about time the Office admit the obvious — patent examination quality is extremely poor! Patent Quality initiatives continue to focus on what patent practitioners and applicants must do to improve their quality, but the Office seems largely disinterested in admitting that there are patent examiners that game the system, that ignore rulings from the Federal Circuit, ignore the dictates from senior management, that tell applicants they will never issue their patent regardless of how the claims are amended. There are numerous patent examiners that speak English as a second language and stories of low language skill is on the rise once again. If the PTAB is a check on patent quality it has to be because patent examiners are doing a poor job. How else can you explain the extraordinarily high rate at which petitions are instituted and claims lost? 

 

LEE: The economics are different at the beginning of a patent’s lifecycle. The value of a patent is often not fully known at time of filing perhaps due to the nascency of the technology, industry and/or market, and the time and resources afforded during examination are typically limited. Innovation isn’t served if the USPTO only strives to issue very expensive “bullet-proof” patents after many years of examination.

MY TAKE: I’m sorry, but this is insulting. It is perfectly fine and true to recognize that at the beginning of an invention’s lifecycle it is not known whether it will be a million dollar invention, a billion dollar invention, or a complete flop. But to then say that innovation isn’t served if patents are only issued after many years of examination reeks of being so hopelessly out of touch. In certain areas of the Patent Office it is not at all unusual for applicants to be awarded 10 years of additional patent term; term that is awarded as the result of Patent Office delay. Getting any patent takes years, getting a worthwhile patent in a commercially viable market segment takes many years, if not a decade or longer. NEWSFLASH: Innovation is already not being served because many innovators do not obtain a patent for extraordinary and unreasonable lengths of time. It is almost as if patent examiners fight a war of attrition against applicants, who are treated like the enemy. 

 

LEE: Extensive time and expense would mean that innovators would file too few patent applications, given finite budgets.

MY TAKE: As already mentioned, applicants are already forced to wait for extensive and unreasonable lengths of time. Further, obtaining a patent is not free. There are fees charged by the Patent Office and then attorneys’ fees necessary to prepare and prosecute a patent application. Thanks to Congress, the Supreme Court and the Federal Circuit, the requirements for what goes into a patent application only continues to grow. So innovators are required to spend many tens of thousands of dollars just to get a patent. Then if the patent they get winds up being commercially valuable they will need to spend many hundreds of thousands of dollars (if not $1 million or more) defending the patent in a post grant proceeding of one kind or another, usually an inter partes review. 

 

LEE: If over time the industry and the market determine that a piece of patented technology is valuable and the public believes it is not valid under current law then there is an economic incentive to expend greater resources to test the validity of the patent.  And a panel of technically trained judges steeped in patent law is well-suited to perform this double-check quickly and efficiently.

MY TAKE: Perform a “double-check quickly and efficiently”? Well that doesn’t sound so bad, if only it were true. First, there is nothing easy about a post grant proceeding. The rules are stacked against the patent owner from the beginning. For example, although the statute says the patent owner has a right to amend the PTAB almost never allows amendments because they interpret the statute to mean the patent owner has a right to ask for an amendment, which they can then summarily deny. That rule is just emblematic of the types of rules in what is a process that is so thoroughly one-sided that it stretches the imagination to come up with a plausible argument as to how patent owners are not being deprived of due process as their valuable property rights are being stripped away. A process is constitutionally infirm when it sacrifices procedural fairness in the name of efficiency, as do the PTAB processes. 

 

LEE: In short, to best incentivize innovation, the USPTO needs to issue IP rights that are as certain, reliable and affordable as they can reasonably be, and offer post-grant proceedings that quickly, accurately and cost-effectively test the validity of patents, proven to be of economic importance, if questions of validity arise. With all of that said, it is essential that these post-grant proceedings are properly calibrated so that they provide a quality check but do not bar deserving patentees from enforcing their patent rights. It’s why a number of the protections in the AIA are so important, such as restrictions on timing of challenges, thresholds petitioners must meet for institution, and strict estoppel provisions.

MY TAKE: This sounds wonderful, but it ignores reality. The PTAB can and does institute challenges on less than all of the claims sought to be challenged, and even with respect to those claims that are instituted the PTAB is not required to address all of those claims in a final written decision. This is critical to understand because there is only estoppel with respect to claims that have been subject to a final written decision. So if the PTAB doesn’t institute, or even if they do but then ignore the claims in the final written decision, there is no estoppel. With respect to time limits on bringing an inter partes review, that is really quite disingenuous since a patent can be challenged in an IPR proceeding at virtually any time. The only caveat is that the time to challenge is limited to a year after a charge of infringement has been made. But even if someone were to miss that one year that doesn’t mean the patent can’t be challenged, of course someone else could challenge the patent. And who exactly is missing the one-year deadline to file after there has been a claim of infringement levied? No one, or virtually no one unless they mistakenly relied upon the catastrophic power failure being declared a national holiday by Director Lee. 

 

LEE: It’s also why the agency is committed to revising our rules as many times as needed so these proceedings are as fair and effective as possible within our Congressional mandate. It’s why it is critical, within this framework, the USPTO issue the very best quality patents possible.

MY TAKE: Revising the rules will only make a difference if there is also a change in philosophy at the Patent Office. Unfortunately, during the second term of the Obama Administration patent applicants and patent owners have largely been viewed as the enemy. Innovators are asked to wait unreasonably long periods of time, spend many tens of thousands of dollars to obtain a patent, only to find themselves spending many hundreds of thousands of dollars in front of a Board that is so out of touch they cannot begin to see the fundamental unfairness of the process. At the same time the political leaders at the Patent Office defend the entity that is the PTAB as if it is some Marvel hero — a Captain America of patents. Stripping patent owners of patent rights without even a modicum of procedural fairness is more villain than hero. Subjecting patent owners to repeated and harassing challenges despite having the statutory authority as Director to step in and say “enough” is unjust. Pretending that the PTAB is some kind of champion of the patent system is incredulous when the entity has without explanation and after repeatedly denying institution suddenly changed its mind.

Quality patents is a worthwhile objective, but harassing patent owners and enabling efficient infringers is hardly an acceptable way of achieving that laudable goal. 

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 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 37 Comments comments.

  1. Night Writer November 16, 2016 10:20 am

    Sure. And Reagan was a conservationist. Sure. I think she is trying to burnish her image as best as possible before moving on to her great reward from Google of $10-$40 million dollars for her service to Google during her tenure as the Director of the USPTO. Thanks Obama.

  2. Night Writer November 16, 2016 10:23 am

    By the way, it is very remarkable that Lee did not mention the Google patents as examples. These patents are likely the most valuable patents in history, and yet she did not mention them because they are information processing patents, which she in her anti-patent judicial activist role would like to end protection for.

    What a vile person. What bothers me so much is that she will not even stand up and debate reality. My prediction for her future is that she will take her prize from Google and not be heard from again.

  3. step back November 16, 2016 10:41 am

    Surely with such talents, the new administration will have a high level position for her in the Ministry of Truth and History Revisionism (*)

    (* This makes sense only if you’ve read Orwell’s 1984. Which probably is no longer required reading in the grade schools since we’ve crossed over into that world for real. War is peace. Efficient infringement is innovation. Big Brother loves us.)

  4. Ternary November 16, 2016 11:06 am

    Right on the mark Gene. These remarks confirm that the patent system increasingly is a “bait and switch” operation. It entices inventors to disclose as much as possible, give them limited and uncertain property rights and take these property rights away when they start to become valuable.

    It is telling that Director Lee specifically identifies “… particularly [in] the later part of a patent’s lifecycle.” Arguably, the most desirable innovative inventions are the ones that change a technology or an industry. These changes do not happen overnight. It is no surprise that still many patents issued in the 1990s around the Internet and mobile communications are now being asserted (and invalidated).

    Innovation requires novel approaches and a patent system should reward “risk taking inventing” not punish it if it wants to stimulate innovation. But valuable patents are also a pain in the neck for companies and institutions that do not own them. One possible and now preferred way to get rid of these “undesirable” asserted patents is to have them declared “invalid” when they become bothersome and for which the PTAB has become a favored forum. Or in the words of Director Lee “in the later part of a patent’s life cycle.” This articulated intent to review a patent’s validity when it becomes valuable is another discouragement to pursue a patent and does not incentivize me to do inventions.

  5. Curious November 16, 2016 11:17 am

    And a panel of technically trained judges steeped in patent law is well-suited to perform this double-check quickly and efficiently
    Steeped in patent law? I almost fell off my chair laughing on that one. The PTAB is mostly (i) older attorneys looking to ease their way into retirement, (ii) former patent examiners who happened to get law degrees, and (iii) former associates at law firms who couldn’t cut it in private practice. Like any grouping of people, there will always be a few gems, but the PTAB is hardly the crème de la crème when it comes to knowledge of patent law (or technology).

    I’ve never seen more misrepresentation of patent law than what I’ve seen come out of the PTAB. The PTAB is little more than a hit squad of semi-patent law literate goons put in place by the infringer lobby to rid the U.S. of any commercially-viable patents.

    Today, there is almost no market for patents owned by small entities. These patents are essentially unenforcable — not because they are bad patents but because no small entity has the financial resources to survive the gauntlet of the PTAB and a Federal judiciary that is plainly anti-patent and getting more so every year. This is precisely what the likes of the mega serial-infringers of the world, e.g., Google (Lee’s former employer) wants.

  6. angry dude November 16, 2016 12:18 pm

    Why is she still there ?

    Google already put a nice stash of $$$ aside for her future

    just leave already !

  7. angry dude November 16, 2016 12:23 pm

    Ternary @4:

    “Right on the mark Gene. These remarks confirm that the patent system increasingly is a “bait and switch” operation. It entices inventors to disclose as much as possible, give them limited and uncertain property rights and take these property rights away when they start to become valuable.”

    What do you think, inventors are stupid ?

    I say: “fool me once – shame on you, fool me twice – shame on me”

    This should be a motto of every independent American inventor today

  8. John November 16, 2016 12:44 pm

    Fantastic article Gene. Thank you so much for having the courage to tell it like it is. You’re maybe the only light on reality through the anti patent zombie fog.

  9. Valuationguy November 16, 2016 3:12 pm

    While I applaud your article….the bigger issue I would like discussed is whether you or anyone else there at the Conference bothered to challenge Lee’s fairy tale to her face in a Q&A session at the end of her BS remarks?

    Writing an article in opposition later doesn’t have the same impact as challenging propagandists as they are spewing their drivel in front of a public audience which make up key industry players. (assuming the Conference wasn’t just another excuse for a bunch of ivory tower academics to sport how smart they are)

  10. Adrian Pelkus November 16, 2016 6:42 pm

    Great point and counter point Gene. The Ex Google exec running our USPTO is so naive as to what real inventors go through. Good grief Director, please wake up!

  11. Gene Quinn November 16, 2016 11:12 pm

    Valuationguy-

    First, I did not attend the event. As I mention in the article I based my comments from her prepared remarks, which she typically delivers very closely (if not exactly) as prepared.

    Second, I think you’d be quite surprised at the impact my writing an article has.

    Third, I can assure you that the those at the USPTO are very well aware of my opinions.

    -Gene

  12. Devon Rolf November 16, 2016 11:35 pm

    Thank you, Gene, for this article.

  13. Broken and Bloodied Inventor November 16, 2016 11:39 pm

    Michelle — you should be ashamed and embarrassed for all that you have espoused, done, not done, and embraced during your tenure.

    Thrusting one dagger after another into the backs of us 1,000’s of hard working American inventors.

    Again.

    And again.

    And yet again.

    Standing up not for us little men and women, but for BigCorp

    Again.

    And again.

    And yet again.

    Though you will soon leave office Michelle … you will do so with the stains of our blood, sweat, and tears on your hands.

    Stains which cannot be washed off.

  14. Night Writer November 17, 2016 3:30 am

    And we are very lucky to have you Gene.

  15. Kevin R. November 17, 2016 8:51 am

    I attended the conference. Director Lee read a speech that followed the text–it may have had more statistics than the prep remarks. It felt fairly political at the time, especially considering that at least 3 of her predecessors were in the audience (and a likely future appointee or two). Lee was proud of the many chances the PTO has offered for input via comment solicitation and round tables. There was no Q&A available after but she stayed for the first panel and mingled a bit. There was certainly a level of professional courtesy in not confronting her there or calling for complete dismantling of the PTAB, but the speech set a tone for the following panels to really highlight the shortcomings. The panels discussed issues with BRI, standards and burndens, rule making, and even the reality that Chevron deference could disappear very soon. Former Dir Kappos–who appears to be taking a more pro-patent stance each time I hear him speak–referenced “gang tackling” in IPRs and Dir Lee asked (as an audience member) for submissions of actual examples of patents who are IPRed by several entities. The PTAB chief judge also sat on a panel later, echoed the request for specific submissions of worrisome areas, and spoke highly of the PTAB hitting all statutory deadlines. The panel pushed back on the confirmation bias of institution and decision writing–perhaps spurred by deadlines–but judge took copious notes and promised to look into a number of issues. That’s the best we can do, so now it’s time to start writing about policy directions for the next administration to listen to.

  16. patent counsel November 17, 2016 9:51 am

    Thank you, Dir. Lee. I understand. Innovation and invention become a luxury only the wealthy can afford. You have achieved your goal.

  17. Still yet another anon November 17, 2016 10:11 am

    “MY TAKE: If the PTAB has been a valuable check on patent quality then it is about time the Office admit the obvious — patent examination quality is extremely poor!”

    If I may be permitted a polite comment from Downunder, US patent examination standards are bl**dy awful, and have been for some time!

  18. xtian November 17, 2016 10:19 am

    @ Kevin R. ” Dir Lee asked (as an audience member) for submissions of actual examples of patents who are IPRed by several entities.”

    Kyle Bass and his coalition. Search him as a filer and you’ll see the multiple times he IPR’d (now a verb!) several of the same patents.

  19. Night Writer November 17, 2016 1:37 pm

    >>Dir Lee asked (as an audience member) for submissions of actual examples of patents who are IPRed by several entities.

    Well, as the head of the PTAB, Director Lee should be aware of this already and should be keeping statistics about this. Typical behavior. Nothing is wrong until you prove it–not I will make sure I am doing my job right.

  20. Edward Heller November 17, 2016 4:03 pm

    I agree with much of what Lee said. We should not spend greatly on every application attempting to make each and every one bulletproof for later litigation. We need to do that only for patents that are found to have commercial value. For the run of the mill application, an examination that focuses on formalities should be given to all, with options available to the applicant to pay for a standard search, or optionally for more extensive searches, and/or, additional searches after an amendment. In other words, extended prosecution should be conducted only if the applicant choose that route; and this should be intended by the applicant to strengthen the likelihood that a patent might be respected before is it actually litigated at least once.

    For the patent that turns out to be valuable and one that potentially might need narrowing of the broader claims, simple procedures should be available as they are in England to allow narrowing limitations without any further examination of the prior art. With respect to past infringements, damages should be allowed if the past infringement infringes both the broader and narrower claim.

    In real life, patents are only asserted against a deep pockets defendant if the owner is willing to go to court to defend both validity and infringement. The defendant always has the right to defend by proving invalidity.

    Our system needs to be rethought before we act any further. But one thing is abundantly clear, all post grant non consensual patent revocation proceedings in the patent office need to be abolished.

  21. Gene Quinn November 17, 2016 4:29 pm

    Edward-

    The problem with what Lee said is it is wrong. We can’t give bulletproof patents because it would take years. Well, it already takes years — many, many years. If the Office wants to have a discussion about significantly streamlining the patent prosecution process so that examiners issue patents very quickly after only a quick look let us have that conversation. But that requires: (1) patent examiners to actually issue patents; and (2) patents to issue very quickly and without much cost. Right now we have a system that takes upwards of a decade to issue patents (sometimes more) and costs an extraordinary amount to obtain those patents only to have the Patent Office strip the patent rights away. It is bait and switch.

    -Gene

  22. Edward Heller November 17, 2016 5:16 pm

    Gene, I hear you. I am about to have issued claims in a case first filed in 2006 (actually this is a continuation after we lost an earlier appeal), where we won the second appeal. The priority date is 2000. Can you imagine this case being IPRed so that by the time the IPR and its appeal are over the patent will have expired and the markets that once made it valuable have all but vanished?

    We need a completely different system than this. We do need to talk about some way we can get in and out of the PTO cheaply, and have the option, if we need it, to go back in and fix the claims. Expensive prosecution, and post grant systems, take far to long for fast moving technology. Moreover, startups need patents, and reliably enforceable patents, simply to justify investments.

  23. Anon November 17, 2016 6:20 pm

    Any type of “later examination when valuable” will be gamed.

    You are simply better off in that case to abolish the current patent office structure and go with a pure registration system with no presumption of validity. You can run the Office as a cross-referencing information retreival service for most likely under a million a year (compared to the several Billion – yes, that is a “B” – cost now with examination as it is and ALL paid for by innovators).

  24. Night Writer November 18, 2016 7:06 am

    Everyone should really take a minute to think about this. Google has a few early patents that were responsible for creating 100’s of billions of dollars in wealth. Those patents are information processing patents. Those early patents are still tied to about 90 percent of Google’s revenue.

    Yet, Lee does not mention them. Clear indication that we are dealing with an incredibly intellectually dishonest person.

  25. Gene Quinn November 18, 2016 8:32 am

    Edward-

    Amen to patents that are reliably enforceable and quicker to obtain. The Patent Office is allowing the system to cripple itself. The bait and switch of the PTAB is but one of the problems facing the patent system. Whoever the next Director is will have real challenges.

    -Gene

  26. Concerned November 18, 2016 11:03 am

    @Anon 23

    Interesting suggestion. Can I add that can an open source project all be started to use machine learning to uncover prior art and make it part of the record? And this point makes me wonder if 90% of examiners could be replaced with sophisticated machine learning software? Could patent quality be any worse than what we have had over the past 10-20 years? I’ll also add that a computer will never do as a good a job as a top notch examiner. But I think the computer could beat the average of what we have today.

  27. Concerned November 18, 2016 11:06 am

    Gene thanks for this great blog. I sincerely hope you are on the short list to replace Director Lee!

  28. angry dude November 18, 2016 12:30 pm

    Concerned @26

    In actuality it is sufficient to stuff examiner corps with professionals (MS and PhD level) educated in their respective fields of science/tech policing their respective art units for new useful discoveries/inventions (or referring to other groups within PTO if they feel they lack the knowledge) .. pay them accordingly of course
    And allow examiners to spend at least a week on each application which has any merit at all and looks potentially valuable
    Legal training is less important:
    the only two questions an examiner should be able to answer after a week of studying are these:
    is this new AND is this unobvious ?

    What is so difficult about implementing this ?

    Raise PTO examination fees 5 times if necessary, but issue patents at least worth of paper they are written on – and make everyone respect them

  29. angry dude November 18, 2016 1:00 pm

    Gene @21:

    There is a big problem when patent prosecution stretches over many years:
    invention can become commonplace and obvious in hindsight to many people in the field, including patent examiners

    Examination should be relatively prompt, but not necessarily cheap
    (still a lot cheaper than PTAB proceedings)

    I say PTO examination fees and patent lawyer’s application preparation fees should be similar (right now we have to pay lots of $$$$ to patent lawyers only to have cheap examination by PTO)

  30. Concerned November 18, 2016 5:48 pm

    Angry dude @26:

    “stuff examiner corps with professionals (MS and PhD level)” … “pay them accordingly of course”

    with all due respect, smart talented scientists and engineers won’t work for .gov, and won’t move to D.C. aka “the swamp”. Hiring smart people is a really hard problem.

  31. angry dude November 18, 2016 7:54 pm

    Concerned @30

    “…smart talented scientists and engineers won’t work for .gov, and won’t move to D.C. aka “the swamp”. Hiring smart people is a really hard problem”

    With all due respect, you are 100% wrong and actually from another planet 🙂

    I myself work for .gov – have .gov email (in part because my “exclusive” patent rights being stolen by US government-backed SillyCon Valley Pirates I just couldn’t find a safer place to hide and still pay my bills 🙂 and I (as well as a large percentage of all talented scientists and engineers in US) would love to move to Washington DC or its suburbs but nobody offered me a position with location-adjusted salary and I just can’t afford it – DC is super expensive

    Please, don’t take you views of the world from mainstream media – they are paid liars

  32. Anon November 19, 2016 7:45 am

    So you realize that your comment about “love to move, but” supports what the comment by Concerned states, Angry Dude?

    Don’t let your anger blind you.

  33. Ternary November 19, 2016 3:45 pm

    Angry dude. My problem is in general not with the Examiners. It is with the rules. The payment of Examiners appear to be reasonable. Around $150k for a primary examiner. I doubt that paying more money will get you better examination.

    The whole process of patent prosecution has become a byzantine nightmare, with rule changes taking place during the process, new rules that have no scientific basis, rejections that are so convoluted that you start to wonder what ‘common sense’ is supposed to be.

    A patent is a bureaucratic process, an afterthought on an invention, a process like obtaining a driver’s permit, simple but strict and rational. But now an incredible pain in the neck. Submitting a peer-reviewed scientific article (on which many patents are based) is more straightforward and easier than obtaining a patent. This should tell us that something is not right. This goes way beyond paying more to people, be it attorneys or examiners.

  34. angry dude November 19, 2016 10:29 pm

    Anon @32

    Is it just me angry or lotsa of other folks too ?

    I have PhD in geophysics and still voted for president who does not believe in climate change – so angry I am at those google shills at PTO and elsewhere and at government officials who allowed them to penetrate Wash DC
    To hell with climate change, lets get rid of SillyCon Valley corporate shills with their lies about need for patent “reform” and lack of qualified people in US (“give us more indians on H1B visas”)

  35. Anon November 20, 2016 7:59 am

    angry dude,

    Do not mistake a valid concern to be angry with the point about being angry may make you rash and not engage in critical thinking.

    Anyone can always find something to be angry about. It is a mistake though to focus on the anger to the exclusion of critical thinking.

  36. Search Horizon November 26, 2016 3:32 am

    What the PTO is doing is to issue patents that have little value. Examiners whittle down claim scope mercilessly (usually by applying some hindsight motivation to combine references). Once the patent issues, the PTAB extinguishes any remaining value of the patent.

    This is reflective of the PTO’s unwillingness to stand by patents that it issues once they becomes the subject of litigation (and the potential to become controversial).

    What is even worse, the PTO’s attitude regarding patents that eventually become invalidated is to … is to have its examiners issue more rejections. which is silly and frustrating from applicant perspective. Quality patent does not mean more mindless rejections that whittle down claim scope through longer prosecution.

    All this leads to the central question of quality – what can the PTO and agents do to improve patent quality without increasing the cost of patent prosecution? To answer this questions, IMHO, one has to understand, in detail, the mechanics of patent prosecution from both applicant and examiners’ perspectives.

  37. Edward Heller November 28, 2016 7:03 pm

    Search Horizon@36. We need to consider a system where the applicant can get out of the patent office with a patent not fully approved by the examiner and by the PTAB. Such a patent should not have any presumption of validity, but should otherwise enforceable in court. Thus the only thing that the applicant should get by suffering the slings and arrows of outrageous prosecution is some reliably increased presumption of validity.

    And that would mean that IPRs should not apply to such applications. It would also mean that IPRs might be applicable to applications taken out of the patent office without the patent office’s complete approval.