Tillis, Leahy Introduce Legislation Mandating Reports, USPTO Improvements on Patent Quality

“The decades-long patent quality debate has been confusing at best, with some arguing that the term has been leveraged as a way of undermining U.S. patents to the advantage of Big Tech companies and China.”

https://depositphotos.com/13160135/stock-photo-high-quality-level.htmlSenators Thom Tillis (R-NC) and Patrick Leahy (D-VT) today announced the introduction of the Patent Examination and Quality Improvement Act of 2022, which is aimed at “evaluat[ing] and improv[ing] the patent examination process and the overall quality of patents issued by the USPTO,” according to a press release.

Last week, Tillis told IAM that he would be introducing legislation to reform U.S. patent eligibility law, which is still to come. The bill announced today instead focuses on providing clarity around “what constitutes patent quality, the setting of patent quality metrics, and how the quality of work product performed by patent examiners is measured within the office.”

Comptroller General Report

The text of the bill requires that the Comptroller General of the United States, head of the Government Accountability Office (GAO), submit to the IP Subcommittees of both the U.S. Senate and House of Representatives a report within one year of enactment of the bill with recommendations on how to improve the patent examination process and overall quality of issued patents. The bill asks that the report focus in particular on improving the examination process with respect to application of Sections 101, 102, 103 and 112; what constitutes a thorough patent search by an examiner; that it “rigorously evaluate” past attempts by the Office to improve patent quality and explain what did and did not work, and why.

The legislation also asks the Comptroller General to assess whether the U.S. Patent and Trademark Office (USPTO) needs to implement clear guidelines on what constitutes patent quality and establish clear, publicly accessible patent quality metrics.

The Office presently hosts a patent quality metrics page on its website.

The bill further requires that the report study whether the Office needs to give examiners more time for examination and whether examiner interviews need to be recorded and placed in the record.

The bill invokes the model used by the USPTO’s trademarks division to investigate suspicions of fraud on the Office in the application process and calls for the Comptroller to make recommendations regarding examiner training.

USPTO Guidance and Director’s Report

Once the report has been submitted, the bill would mandate that the USPTO Director develop guidance for examiners as per the report. Two years after the bill is enacted, the Director  is tasked with soliciting public comment and submitting a report explaining how the Office will improve examiner technical training in emerging technologies; the status of IT capabilities with respect to examination of both patents and trademarks, Patent Trial and Appeal Board and Trademark Trial and Appeal Board proceedings, and recordation of patent assignments.

Finally, the bill mandates that the Director’s report account for the use of advanced data science analytics to improve examination, including to ensure that patent claims have support in the specification, to detect common errors, and to ensure assignment to the best examiner. It also requires a five-year plan for the use of such analytics and how such uses will be made publicly available.

Does it Mean Anything?

The decades-long patent quality debate has been confusing at best, with some arguing that the term has been leveraged as a way of undermining U.S. patents to the advantage of Big Tech companies and China.

“If the United States is going to continue to be the world’s leading innovation economy, then we have to first make sure our patent system is strong and instills confidence,” said Tillis. “We only have strong patents when those patents are of the highest quality and meet all the requirements of patentability.

Leahy commented: “This bill follows up on our hearing last year on patent quality, which put a spotlight on the fact that many U.S. patents represent brilliant inventions and drive our economy. Unfortunately though, some are issued by mistake and can cause great expense for unsuspecting Americans and small businesses.”

During the patent quality hearing held last June, Leahy invoked several old examples of “bad patents” being asserted by patent trolls, which Senator Chris Coons warned against. Coons said, “I do want to make sure that the pursuit of patent quality as such is not used as an excuse to weaken patent enforcement protections for all patent owners.”

 

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22 comments so far.

  • [Avatar for Anon]
    Anon
    August 8, 2022 07:35 pm

    I have a saying for some of my very liberal friends:

    If you don’t want to hear “conspiracy theories” (such as may be at point here in relation to the Deep State)…

    … then STOP leaving so many indicators that these theories are in fact true.

    As I have pointed out on many occasions, when the Office could no longer keep LYING about the existence of SAWS, they made the mistake of admitting that SAWS was but one of MANY such (shadow) programs.

  • [Avatar for Julie Burke]
    Julie Burke
    August 5, 2022 07:09 pm

    In response to Anon, yes, I believe 37 CFR 1.2 applies.

    So does MPEP 719: The electronic file record in which the U.S. Patent and Trademark Office maintains the application papers is referred to as an image file wrapper. The electronic file is the official record of the application.

    It’s likely that contractors, paid by inventor filing fees, are instructed to select the obsolete USPC symbols we see listed in the patent application data section of the official record.

    It’s likely that contractors, paid by applicant’s filing fees, are instructed to update the Classes arranged by Art Unit (CAAU) and Classes arranged numerically with Art Unit and Search room locations (CAN) reports using USPC, not CPC, symbols.

    These monthly updates appear superfluous, since apparently CPC, not USPC, is being used to route applications to examiners. Moreover, USPC classes are being assigned to obsolete art units including 1671, 1673, 1674, etc., disbanded years ago. And no USPC subject matter is being assigned to the new SCE art units, 1699, 1759, 2198, etc. See

    https://www.uspto.gov/sites/default/files/documents/caau.pdf

    Why are inventor filing fees being spent to update obsolete art unit listings with obsolete USPC symbols?

    Why are patent applicants NOT able to see in the official record, the CPC symbols used to route applications to art units and individual examiners?

    Turns out, contract employees are overseen by USPTO employees.

    In 2014 and again in 2019, the OIG reported that USPTO employees who oversee hundreds of thousands of dollars in contracts were not properly (i) appointed, (ii) trained, and/or (ii) certified.

    https://www.oig.doc.gov/OIGPublications/OIG-15-012-A.pdf

    https://www.oig.doc.gov/OIGPublications/2019-07-10_USPTO_Contract_Closeout_Final_Report.pdf

    Has anyone told the contract employees to stop classifying applications under USPC, since CPC apparently is being used to route applications?

    Makes me wonder who (USPTO managers? search and classification examiners? contractors?) are selecting and applying CPC symbols to patent applications, using such symbols to route applications to art units and examiners and then hiding such symbols, like the SAWS flags, from applicant’s view in the official records.

    Maybe the Senate can find out for us.

  • [Avatar for Julie Burke]
    Julie Burke
    August 5, 2022 06:25 pm

    Hello Examiner Examino and Primary Examiner-

    Thank you for your invaluable input. It is difficult for people outside the office to understand what it’s like to work inside the patent office. I can appreciate that things have changed, perhaps greatly, since my departure 2015.

    Your account of management giving SPEs high degree of flexibility in applying the new, subjective indica system is both eyeopening and frustrating.

    And I can see from your explanation as to how cases are assigned using the C-star (C*) system, including basing docketing decisions upon an examiner’s number of office actions, instead of number of applications, that not only patent examiners, but also the IP community should be concerned with this development.

    The trouble is, USPTO management has not been entirely forthcoming in terms of informing the IP community how the CPC system is being used to route applications to, what they have called, “the best examiner.” We can’t see the CPC symbols assigned to each art unit or the C-stars placed on our applications.

    Our ignorance makes your collective, invaluable inside information all the more appreciated.

    Thank you-
    Julie

  • [Avatar for primary examiner]
    primary examiner
    August 5, 2022 07:04 am

    “It is a monument to cost efficiency over quality. Momentum helps hide the problem, but as older technologies fade and new technologies grow, the discrepancy between the examiner workforce and the applications being filed will grow. And that discrepancy will be solved by handing examiners applications which they are unqualified for, giving them a pittance of time, and declaring them qualified. I suspect it will make today look like an Examination-Quality golden age.”

    Spot on.

  • [Avatar for Examino]
    Examino
    August 4, 2022 11:31 pm

    Burke,

    Meeting one criteria under each indicia is not necessarily sufficient to show that the indicia is met. Further, the new system requires SPEs to assert that the indicia criteria are met, rather than assume they are met until a SPE shows otherwise. The new system provides SPEs with more flexibility in identifying minor problems, and using those to give a FS rating. I actually think this subjectivity is an improvement- it is not possible to metricize every aspect a job, and requiring SPEs to apply some subjective evaluation of examiners with a bias towards merely “fully successful” will increase the rating differentiation between examiners.

    Your issue with the C-star system is on much stronger ground. The whole point of the new docketing system is to create a mechanism for forcing examiners to examine new subject material with minimal time provided for re-teaining. It should be an outrage to anyone familiar with the system.

    The greatest issue is that just 5 actions makes you qualified in an area. Again, that is ACTIONS not APPLICATIONS. Say you’re given a new application in a totally unfamiliar area because the office needs to process that case. If you reject the case non-finally, reject it again as a second non-final, reject it finally, receive an RCE and reject it non-finally, and then allow the case… You’re now qualified in every C-star associated with that case! The PTO docketing system will target you to receive such cases if there is any overflow from those areas, and any further cases in those areas will receive no additional time, which is remarkable since the PTO only gave a miserly 1-6 hours of time for that first case.

    It is a monument to cost efficiency over quality. Momentum helps hide the problem, but as older technologies fade and new technologies grow, the discrepancy between the examiner workforce and the applications being filed will grow. And that discrepancy will be solved by handing examiners applications which they are unqualified for, giving them a pittance of time, and declaring them qualified. I suspect it will make today look like an Examination-Quality golden age.

  • [Avatar for Anon]
    Anon
    August 4, 2022 03:59 pm

    Ms. Burke,

    How does your answer (and exchange) with Chalk conform to 37 CFR 1.2?

    Are not these items necessarily a part of the written record?

    Thanks,

  • [Avatar for primary examiner]
    primary examiner
    August 4, 2022 03:28 pm

    “An examiner who performs none of the 21 indicia appears to be eligible for a fully satisfactory rating.”
    Correct, assuming the Examiner performs at the required fully satisfactory levels (production, docket management, and quality), not performing any of the indicia means the Examiner will get a fully satisfactory rating.

    “Second, the indicia system has changed from demonstrating compliance with 3 broad requirements to demonstrating compliance to an open-ended Markush listing of 21 overlapping tasks, from which the examiner can pick and chose one or more task “or any additional activities or characteristics” to apply to any particular office action.”
    Performing just one of these indicia does not guarantee that the indicia has been met. The number of indicia that need to be included in an Office Action (for that indicia to be met) is at the SPE’s discretion; this decision is totally subjective and can vary from SPE to SPE.

  • [Avatar for Julie Burke]
    Julie Burke
    August 4, 2022 03:13 pm

    Hello Examiner Examino-

    Welcome to the discussion. I am interested in your thoughts on the new “indica” system and how it is being implemented by USPTO management.

    From my review of the examiner’s performance and appraisal plan (PAP) provided to Congress in 2021, it appears the USPTO has revised the prior indicia system in two ways.

    First, in order to rated as commendable prior to 2021, an examiner would need to comply with all the indica in substantially all office actions. Under the 2021 PAP, the examiner who complies with the three indica in the majority of their applications (i.e., 51%) could be rated as commendable. This change apparently would make it easier for supervisors to rate their examiners as commendable and creates two tiers of office actions — those examined fully under the indicia system and those not.

    Second, the indica system has changed from demonstrating compliance with 3 broad requirements to demonstrating compliance to an open-ended Markush listing of 21 overlapping tasks, from which the examiner can pick and chose one or more task “or any additional activities or characteristics” to apply to any particular office action.

    An examiner who performs the following 3 activities in 51% of their actions would be apparently fully meet the indicia criteria for a commendable rating:

    1. Searching the invention concept as defined at the time of the first office action on the merits. Accomplishing this one task 1(a) meets Indicia 1, Search and Prior art.

    2. Avoiding unnecessary duplicative rejections. Accomplishing this task 2(g) apparently demonstrates compliance with Indicia 2, clarity of the record.

    3. Performing a thorough search for the claimed invention as defined in the application at the time of the first action. Accomplishing this one task 3(i) apparently demonstrates compliance with Indicia 3, Compact Prosecution.

    Note overlap between compliance with Indicia 1 and 3.

    An examiner who performs none of the 21 indicia appears to be eligible for a fully satisfactory rating.

    This is explained in

    https://ipwatchdog.com/2021/07/01/usptos-roadmap-improved-patent-quality-lead-lake-wobegon/id=135152/

    I would be interested to know if the USPTO is instead rating patent examiners under a different PAP or different indicia scheme than the one they provided to Congress in 2021.

    Lastly, I do sympathize with your valid concerns that the quality rating system is highly subjective. No one appreciates having their work reviewed under a highly subjective scheme.

  • [Avatar for Julie Burke]
    Julie Burke
    August 4, 2022 01:20 pm

    Hello Chalk-

    Thank you for confirming that the USPTO uses CPC scheme to route applications to patent examiners, information reported 26 April 2022 at
    https://www.law360.com/articles/1482284/a-quiet-change-at-the-uspto-creates-a-2-tier-exam-process

    In contrast, even today, the USPTO Patent Classification website still provides class schedules arranged by art units based on USPC, not CPC. See USPC schedule updated August 2022 available here

    https://www.uspto.gov/sites/default/files/documents/caau.pdf

    The patent application official records still show the USPC symbols, not CPC symbols, being assigned prior to examination.

    The USPTO has not informed applicants of (i) CPC subject matter assigned to each art unit and (ii) initial CPC symbols placed assigned to their application for routing, docketing and examination purposes.

    The IP community cannot see the secret C-star (C*) designations being applied to their applications, symbols used by USPTO to route their application to “the best examiner” and to assign examination time for their application.

    Despite paying search fees amounting to $700 for large entity, applicants are left in the dark to guess how their inventions are being classified under CPC for routing, docketing and examination purposes.

    Hopefully, this mysterious CPC classification information will be made available to Congress and to applicants as the USPTO responds to the Patent Examination and Quality Improvement Act of 2022 Section 4(2)(C)(v) assign patent applications to examiners who are most qualified to examine them based on (I) technical background of the examiners and (II) the number of applications that a particular examiner has already reviewed in a similar technical area.

  • [Avatar for Examino]
    Examino
    August 3, 2022 09:54 pm

    Burke,

    Are you trying to mislead these fine people by suggesting the PAP changes only made things easier? While you are correct that error rate ceiling to receive an “outstanding ” rating has increased, that increase was paired with new review requirements to receive an “outstanding” rating. The new “indicia” system is highly subjective, and was made to give management greater flexibility in giving examiners average ratings. No longer is a 3% error rate enough to make an examiner entitled to an “outstanding” rating in quality.

  • [Avatar for Examino]
    Examino
    August 3, 2022 09:37 pm

    As an Examiner this sounds great, but I can’t imagine you guys liking the results much. You’re not going to get a whole lot better performance from just squeezing examiners at their current pay level. Either you give examiners more time, or you improve the pay so you can acquire a better quality of examiner (and fire all the bad ones). Either way, it’ll cost more than the current system does.

  • [Avatar for Chalk]
    Chalk
    August 3, 2022 09:01 pm

    Do they really believe that all the problems originate from only one side of the turnstiles? “Garbage in, garbage out” comes to mind.

    One might predict that the prospect of recordation in the manner proposed at Sec. 4(2)(C)(iv) would have a chilling effect on willingness to hold interviews.

    Also the draft bill does not appear to mention anything about getting the office out of the CPC mess. It was bad enough when used only for classification and searching (the majority of symbols don’t even have definitions), but its current use for routing applications practically guarantees that examiners will get more cases with unfamiliar subject matter.

  • [Avatar for Anon]
    Anon
    August 3, 2022 04:08 pm

    Julie Burke – thank you.

    In multiple ways.

  • [Avatar for Julie Burke]
    Julie Burke
    August 3, 2022 03:06 pm

    The Senate’s Patent Examination and Quality Improvement Act of 2022 mandates the USPTO to (C) evaluate whether the Office needs to (iii) align non-compliance and clear errors with respect to the review of the work product of patent examiners.

    The patent examiner’s Performance and Appraisal Plan (PAP) is the vehicle used to review quality of the patent examiner’s work products – allowances and rejections.

    Examples of changes the USPTO made in the 2021 PAP that reduced patent examination quality include:
    • Quality Element weight decreased from 35% to 30% of overall rating.
    • Error rate permitted for an outstanding rating increased from 4.49% to 6.49%.
    • Error rate permitted for a commendable rating increased from 5.49% to 6.49%.
    • Number of quality functions assessed for error in a primary examiner’s rejection or allowance reduced from 19 to 12, a change made possible by the USPTO’s invention of a “non-error based assessment” standard.
    • Office of Personnel Management (OPM)’s standards used to evaluate whether a primary examiner correctly determined compliance with 35 U.S.C. 102, 103 and 112 was reduced by the USPTO from advanced level to the basic level.

    For those seeking to improve quality of the examiner’s work under sections 101, 102, 103 and 112, a comparison of OPM’s GS-1224 Position Classification Standards to the USPTO’s current and prior PAPs is a good place to start. See

    https://ipwatchdog.com/2021/07/01/usptos-roadmap-improved-patent-quality-lead-lake-wobegon/id=135152/

    To be clear, the watered-down PAP is the mechanism by which USPTO management rates over 90% of the patent examiners as above average in quality. Meanwhile the PTAB busily cancels over 80% of the patents they issue. See

    https://ipwatchdog.com/2018/01/16/ptab-killing-good-patents/id=92094/

  • [Avatar for Primary Examiner]
    Primary Examiner
    August 3, 2022 02:09 pm

    D. Lewis: “Nonetheless, it is worth noting, when I was an examiner, my SPE at times advised me, just play dumb – it is strong negotiating tactic for an examiner. I don’t know how many other examiners use that strategy”

    I must confess I do not understand what your SPE meant by “playing dumb”. Would you mind elaborating on what he/she meant by that?

  • [Avatar for David Lewis]
    David Lewis
    August 3, 2022 01:44 pm

    Improving examiner training is probably a good thing. However, in my experience, the examiners seem to know their technology area reasonably well and do a reasonable job in attempting to properly apply 35 USC 101, 102, 103, and 112, according to current USPTO policy.

    Nonetheless, it is worth noting, when I was an examiner, my SPE at times advised me, just play dumb – it is strong negotiating tactic for an examiner. I don’t know how many other examiners use that strategy, but I sometimes wonder if use of that strategy is part of why there always seems to be a clamor for more examiner training.

  • [Avatar for Anon]
    Anon
    August 3, 2022 01:11 pm

    One pause that occurred to me: every entity accused of infringing a patent will claim that THAT particular patent is a “bad patent.”

    The notion in the article (purposeful or not) that the asserting party was a “Patent Tr011” must be vigorously guarded against – as this smacks of the widespread propaganda of the Efficient Infringers.

    What type of entity OWNS a patent has — and should have — Zero to do with examination quality.

  • [Avatar for PA Crier]
    PA Crier
    August 3, 2022 12:56 pm

    Finding evidence to show average skill in the art is substantive to patent quality and a completely different skill set than applying the law and defining claims. It makes no sense for the same person to do both.

  • [Avatar for Julie Burke]
    Julie Burke
    August 3, 2022 12:32 pm

    As a former USPTO Quality Assurance Specialist, I commend Congress for once again directing the USPTO to revisit patent examination quality.

    Anonymous patent-examiner-turned-patent-agent is correct: USPTO management culture provides few disincentives for having poor quality.

    In 2014, former APJ Bill Smith said it straight in his testimony to Congress. “There was a saying during my tenure at the PTO that a patent examiner never got fired for doing bad quality work, as long as they did a lot of it.”

    See footnote 11 at
    https://republicans-oversight.house.gov/wp-content/uploads/2014/11/Smith-BakerHostetler-Statement.pdf

  • [Avatar for Anonymous]
    Anonymous
    August 3, 2022 11:26 am

    As an examiner and former patent agent I can tell you that patent quality is directly tied to examination time. You cannot expect to improve quality if you don’t want to pay for it.

    Also, there are essentially zero incentives for improving the quality of examination. In comparison, the USPTO strongly incentivizes examining more patent applications over quality examination. There are no bonuses for improving quality. There are few disincentives for having poor quality, as long as you examine more patent applications than what is expected as a baseline.

  • [Avatar for Anon]
    Anon
    August 3, 2022 11:07 am

    Wow – something that I personally have been advocating for (for about 15 years): focus on quality examination as an actual controlled part of how quality may be obtained.

  • [Avatar for Loozap]
    Loozap
    August 3, 2022 04:33 am

    C’est vraiment pas croyable