Steps the PTO must take to address low quality patent examination

The USPTO does have a legitimate gripe with certain patent applicants and practitioners. Only someone who is unfamiliar with the industry would ignore the reality that some applicants and some patent practitioners produce predictably low quality. Likewise, you would have to be willfully ignorant not to appreciate the problems created by the filing of applications that consist of extremely low quality translations of foreign filed patent applications. And, frankly, I’ve never understood foreign applicants not paying U.S. practitioners to fix claims and put them into an acceptable U.S. format, which practically guarantees an unnecessarily prolonged prosecution of the patent application.

Unfortunately, the United States Patent and Trademark Office has lost credibility when it comes to calls for patent quality. As so many in the industry feared when the latest round of patent quality initiatives started, patent quality in the mind of the USPTO is a one way street where applicants and patent attorneys need to step up their game because they are the problem. What about quality examination? The Patent Office talks about that far less than what applicants and practitioners are doing wrong in their view.

While any system should always aspire to provide better quality, the patent system included, patent quality is a two way street that requires the Office to look in the mirror and take care of its own internal business. If the Patent Office is truly interested in quality they should take steps to address low quality patent examination, which is unfortunately too common.

Administrative sloth requires accelerated appeals

When the Board completely reverses an examiner, finding no merit to any of the rejections raised by the examiner, ordinarily you would suspect that a patent would issue. That, however, is not what you should expect in TC 3600. Instead, you should not expect a patent to issue. You should expect the reopening of prosecution and a new search in violation of MPEP 1204.04.

It has been argued by some that I am making a mountain out of a molehill because in those cases that have been recently reopened in TC 3600 after a complete reversal by the Board were in order to issue an Alice rejection. These appeals were filed before the Supreme Court decided Alice, thus it would seem reasonable to review the claims in light of Alice. It may have been reasonable to reconsider the claims in light of Alice several years ago, but more than two years later after the applicant has already been unreasonably (and unnecessarily) forced to wait an excruciating long time since filing? Let’s not forget, if the examiner had actually done their job in these cases these applications would have issued BEFORE the Supreme Court decided Alice. It is utterly unbelievable that an examiner who was completely wrong about everything can continue to prevent the application from issuing. There will always be another case from the Federal Circuit or Supreme Court that would allow the recalcitrant examiner to reopen prosecution. It will never end!

These cases sat on appeal for 3+ years. The outcome of the Board really didn’t matter, as we know, since in those cases where the examiner was found to be completely wrong Alice rejections were then issued. Forget that the Board has the authority to issue new grounds of rejection, which they didn’t see fit to do in any of these cases. Forget that the Board has the authority to issue a remand for the examiner to specifically reconsider one or more claims, again which did not happen. A process that treats applicants, who are presumed to be entitled to a patent, in this way is hopelessly broken.

It is unconscionable that the Patent Office would allow these applicants to sit waiting for the right to fix egregious errors for years. Alice is hardly a new case – it was decided in June 2014. The Board is well aware of Alice. The Office and examiners are well aware of Alice. To have allowed these applicants to just sit waiting only to have the Board decision be meaningless is simply shocking.

A patent is a wasting asset! Extending the patent term is NOT a solution for software related innovations. These types of innovations have a short half-life. Only rarely will one of these innovations meaningfully enjoy a full, useful patent term. So adding patent term on the back end does NOT compensate the applicant for administrative sloth and intentional harassment by examiners who fundamentally and philosophically oppose the patent system.

TO THE OFFICE: The rule says that the Director is the one who is authorized to reopen prosecution after an appeal. This authority has been delegated to the Directors in the Technology Centers. The delegation of authority comes from the MPEP, which is Office policy that can be changed. It should be changed immediately. Reopening prosecution should happen only in the rarest of cases, and it should only be authorized by the Director, Deputy Director or Commissioner for Patents. Such a change would immediately put the leaders of the Patent Office back in charge, assuming that they disagree with this piecemeal it-takes-a-generation approach to prosecution.

Furthermore, if a case is reopened it should be treated with special dispatch and moved to the front of all lines. While many examiners hate hearing it, the law actually says that the applicant is entitled to a patent unless a valid rejection can be raised. That should mean a valid rejection raised in a reasonable period of time. This war of attrition be waged by some patent examiners against applicants is indefensible.

TO STAKEHOLDERS: If you have an appeal pending that was filed before Alice and you are in TC 3600 you might as well file an expedited Track One RCE, get your Alice rejection, and then get back in line for appeal. It makes absolutely no sense to wait for a Board decision when the case is only going to be reopened if you prevail. The risk is just too great to let the Board decide. If you lose the appeal the examiner won’t reopen prosecution because they think the Board made a mistake. Prosecution is only reopened when you win, which makes the Board decision a lose-lose proposition.

Decisions not on the record

Decisions of the Patent Office are supposed to be based only on the written record. 37 C.F.R. 1.2 explains this rule:

The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

The problem is the Patent Office is not basing decisions on the written record. There are unwritten biases of SPEs, Technology Center Directors and Quality Assurance Supervisors (QAS). When an examiner says he or she will not follow a Federal Circuit decision, or a SPE won’t allow those types of patents to issue, that means decisions are being based on things not in the record. It also means Patent Office Guidelines are being ignored.

Although perhaps not exactly what Rule 1.2 is about, the spirit of the rule seems quite clearly intent on creating a complete record for posterity. But the prosecution file is anything but a complete record. Not everything is placed into the record by the Patent Office. Indeed, the prosecution history is a carefully curated selection of documents and stories the applicant and public are allowed to see, not a true representation of what happened during the prosecution.

For example, for many years the Patent Office operated a secret regime called SAWS. If your application were caught up in SAWS you were not told, but your application would be placed into administrative purgatory needing multiple approvals by many different people. The Office created SAWS for what they deemed “sensitive” applications, but it morphed into including any application that covered a technology that the Patent Office themselves might want to use. That isn’t how the system is supposed to work, and applicants caught in the SAWS trap didn’t even know. How is that possible given the record is supposed to be open to the public?

Now second pair of eyes review has returned to the Patent Office for those patent applications impacted by the Supreme Court’s decision in Alice v. CLS Bank. To my knowledge the Office has never publicly announced that each Art Unit has a so-called “Alice expert” who is responsible for reviewing any allowance before an application receives a Notice of Allowance. Of course, this means that the ultimate decision maker is not the examiner you are working with, and might not even be the SPE. Not surprisingly, reports are that the Alice expert is not consulted if the examiner wants to reject an application. So it seems that the Office is only interested in second guessing when an examiner wants to allow, not when an examiner wants to reject, which is all to familiar.

The Patent Office loses all credibility when secret decisions related to applications are made by those not even mentioned in anywhere in the record. It is bad enough that examiners openly admit to practitioners that they will not follow the Office Guidelines or Federal Circuit cases, but when decisions are made in secret the system has become bankrupt.

TO THE OFFICE: If you want to have multiple rounds of review by multiple examiners or “experts” before an application receives an allowance, fine. I don’t think anything at the Office should be done in serial fashion like this, wasting precious resources. Wasting resources in this way is what lead to the out of control pendency problems during the Dudas Administration at the USPTO. If you are going to subject applicants to serial reviews at least have the guts to let everyone know.

Having a complete record means that the Office needs to record what is being done and by who, period. No secrets. No more decisions made behind closed doors by unknown actors following their own personal ideology.

TO STAKEHOLDERS: Given that the Office does not seem particularly interested in ensuring a complete written record it is essential that applicants do whatever possible to force the issue. If you are in an Alice impacted Art Unit you need to find out the name of the Alice expert and have that individual present at any and all interviews. If you are not provided the name of the Alice expert, or the Alice expert does not participate in an interview at your request, you must place a notation on the file to keep the record clear and reflective of what is actually happening, and that there are secret actors that you are not being allowed to contact.

Reassign patent examiners

It may be virtually impossible to fire a federal government employee, such as a patent examiner, even when that examiner is submitting fraudulent time sheets. Once upon a time the way the Patent Office dealt with recalcitrant patent examiners who would not get with the program was through an internal exile. I’ve heard many old-timers tell stories of people being sent to Classifications, which was the Patent Office equivalent of Siberia. Some would simply quit, some would go and never get out of Classifications, some would go and then return, understanding the importance of getting on board.

As far as I know, there is no such similar internal exile any more. Instead, recalcitrant patent examiners are simply left on the front lines to harass applicants as if this is just some big game.

NEWSFLASH: This is not a game to the inventors and companies that seek patent rights. Stakeholders deserve better than an examiner so confident in their defiance that they brag about not issuing patents for years, or declare with an arrogant confidence that they will not follow the Federal Circuit ruling in DDR Holdings v. Hotels.com because the decision is just an aberration.

TO THE OFFICE: If a patent examiner has not issued a patent in years, and there are more than a few that fall into this category, they shouldn’t be examining patent applications, period. If you cannot fire examiners who refuse to issue patents at least put them in positions where they do no damage to applicants.

TO STAKEHOLDERS: Practitioners need to file interview summaries that contain these shocking admissions from patent examiners. An examiner’s utter disregard for the law and the disdain for the patent system MUST be placed on the record. That is the only way anything is ever going to change.

UPDATED: 10:24am ET