On October 3rd, the Massachusetts Institute of Technology and San Jose, CA-based networking giant Cisco co-hosted a launch event for the Prior Art Archive, a database open to both the public and examiners at the U.S. Patent and Trademark Office. According to those collaborating on the project, the database is intended to provide a means through which patent-invalidating prior art can be more easily found by patent examiners during patent prosecution at the agency.
According to an MIT News article on the launch of the Prior Art Archive, Cisco has already uploaded a total of 165,000 documents into the database. A number of other major tech companies have also committed to collaborating with the project including Amazon, Microsoft, Intel, Dell, AT&T and Salesforce. Technology used to classify prior art submitted to the database has also been developed by Google.
USPTO Director Andrei Iancu attended the database’s launch event where he delivered remarks about the importance of prior art to ensuring that patents issued by the agency are of high quality. His remarks touched on a story from the 1960s about a Danish inventor who developed a way to resurface a sunken freighter off the shores of Kuwait with the use of 27 million polystyrene foam balls. The inventor went on to obtain patents from the U.K. and Germany but was denied a patent by the Dutch patent office because of a 1949 Donald Duck cartoon submitted as prior art. The Sunken Yacht, a cartoon in which Donald and his nephews Huey, Dewey and Louie raise a sunken ship by filling it with ping pong balls, disclosed the same technique claimed by the Danish inventor in his patent application.
All intriguing anecdotes aside, but will it matter? There are legitimate questions of whether or not the MIT-Cisco prior art archive will be successful in encouraging third-party prior art submissions based upon data we’ve recently received from the USPTO.
Third-party pre-issuance submissions of prior art can be made before the earlier of— (1) the date a notice of allowance is given or mailed in the application for patent; or (2) the later of— (i) 6 months after the date on which the application for patent is first published by the Office, or (ii) the date of the first rejection of any claim by the examiner during the examination of the application for patent. The purpose is to allow the public to submit prior art examiners should know about and consider prior to deciding whether to issue patent claims.
According to statistics provided by the USPTO, since the beginning of fiscal year 2012, the Office has received a total of only 1,584 third-party submissions of prior art for consideration by patent examiners. The high water mark occurred in 2016, when the office received a total of 329 third-party prior art submissions. This declined to 266 submissions in 2017 and in fiscal year 2018, the USPTO received a total of only 141 prior art submissions.
In both FY 2016 and FY 2017, the USPTO received in excess of 600,000 utility patent applications. In FY 2016, the USPTO received 607,753 utility patent applications and in FY 2017, the USPTO received 602, 354 utility patent applications. See Table 2, USPTO Performance and Accountability Report FY 2017.
To say third party prior art submissions are rarely made is an understatement. But why?
Large entities that supported passage of the America Invents Act (AIA) said they only wanted new ways to challenge bad patent claims and didn’t begrudge anyone from getting and keeping valid claims. The truth, however, is attorneys for these companies routinely recommend not filing third party pre-issuance submissions because it would only offer the opportunity for a patent applicant to work with the patent examiner to more narrowly tailor the claims that issue, making them stronger and harder to challenge because examiners would have considered and applied the best prior art.
But even if patent examiners had every conceivable piece of prior art from every searchable database, other USPTO statistics suggest that patent examiners simply wouldn’t have enough time to consider every prior art reference that could be relevant during patent prosecution. According to the USPTO, during the 2018 fiscal year, patent examiners averaged 21 hours per case. Of course, the time examiners receive varies depending upon the complexity of the technology claimed in the application, but an examination period that on average equates to half a typical work week doesn’t seem as though it would provide adequate time for the full consideration of all prior art that could potentially be submitted.
Patent examination is about a choice. If we want to make sure that no mistakes are made patent examiners will need more time per case, and the budget for the USPTO will have to be significantly increased, tens of thousands of new patent examiners will need to be hired, or the patent examination process will come to a screeching halt. Pursuing such policies would be a poor policy choice when there is simply no public interest in making patent examination better. Third party pre-issuance submissions are not being used by anyone, including Cisco and others in the infringer lobby.