It’s a familiar complaint: when a non-practicing entity (NPEs) asserts patents of questionable quality against a business with limited means. The NPE knows full well that they can likely coerce a business into taking a cheap license in order to spare an expensive court contest. While it’s easy enough to chalk this scenario up to the problem of patent trolls, that logic overlooks the heart of the ongoing challenge of patent quality.
In fact, many of the often repeated criticisms of our patent system harken back to the perceived quality of the issued patent. Vague claim boundaries, less than enabling disclosures and poorly written descriptions — even in relatively small numbers — are a plague on our patent system.
Recognizing the problem, Director Lee at the USPTO has admirably banked her legacy on improving the quality of patents. She established the position of the Deputy Commissioner for Patent Quality and ensconced Valencia Martin-Wallace, a known advocate of improved quality, as the lead. As a result, the USPTO made a series of important strides to enhance patent quality - from search and training enhancement programs to an awareness campaign about the different scientific and technical tools available to examiners.
The USPTO also focused on training examiners to clarify their reasoning on the record of every prosecution and on different aspects of eligibility, written description and enablement.
Most importantly, the Office provided the public with the ability to weigh in on different quality case studies to assure that the patent corps was applying the rules and regulations uniformly. The Office selected six areas for an initial review where they will assess the deviation of subject matter eligibility rejections from official guidance, the consistency of subject matter eligibility rejections in different art areas, and the practice of compact prosecution when subject matter eligibility issues are present. In addition, the Office will also study the clarity and motivation in obviousness rejections, written description issues in continuing applications, and, functional claiming.
The USPTO should be applauded for undertaking this review and the important steps they’ve taken to address patent quality. Considering the harm caused by inconsistent or inaccurate actions, however, the Office’s review period would be strengthened if followed by decisive action. To ensure a healthy and robust IP system that encourages innovation, the USPTO must act quickly on their findings and also address the outstanding concerns within the patent community.
One area that needs laser focus is a complete and accurate search at the first action. The search drives prosecution and needs to encompass the full invention. It should be the rare occasion that an unanticipated amendment would necessitate a change in search terms. While difficult to evaluate the completeness and accuracy of a search in the technical areas known best by the examiners handling the subject matter, the Office should act now to develop tools and competency to assure that the best searches are done and only updating is needed later in the prosecution.
Secondly, the USPTO must reinvigorate its efforts to collaborate with inventors to find allowable subject matter in their applications, if any is present. Few inventors file knowing they don’t have an invention. The USPTO must take great care to ensure that inventors are not discouraged from filing applications because of perceived difficulties or costs they believe they will encounter when productive outreach from examiners can help them efficiently navigate the system.
Thirdly, the USPTO needs to investigate how their data can be used to identify outlier examiners whose allowance rates are way out of line with others in their art areas or who never reach a final rejection or who seem to misapply office guidance.
The solution here is to first identify these cases, assess the data, and appropriately ensure that examiners receive the guidance or additional training they need to be successful.
Today, the importance of the quality of an issued patent has far exceeded the need for reduced pendency or even the numbers of patents in a portfolio. That’s why it is essential for the USPTO to be trusted by inventors and the IP community as being a top-quality, unbiased service oriented organization that helps applicants get valid patents. Transparently taking action will garner public support and lead to better quality patents, which means a stronger protections for innovations and a healthier system overall.
Stoll is a partner and co-chair of the intellectual property group at Drinker Biddle & Reath and a former commissioner for patents at the United States Patent and Trademark Office.
The views expressed by Contributors are their own and are not the views of The Hill.