Changes are coming to the USPTO--Part III: David Kappos: "patent quality does not equal rejection"
Posted on Tue, Aug 25, 2009 @ 09:36 AM
by Robert J. Sayre
For parts one and two of this series, please see my earlier posts on recent comments regarding reform of the United States Patent and Trademark Office (in particular reforming the "count system") made by new USPTO Director David Kappos and by Secretary of Commerce Gary Locke.
Thanks to Professor Dennis Crouch at the patently-o blog, we now have further evidence that Director David Kappos "gets it." Dennis provides the following quote from a message that Kappos (pictured below, right, while being sworn in by Locke, left) reportedly sent to the USPTO corp of examiners:
One key is to expeditiously identify and resolve issues of patentability—that is getting efficiently to the issues that matter to patentability in each case, and working with applicants to find the patentable subject matter and get it clearly expressed in claims that can be allowed. The examiner and the applicant share the responsibility for the success of this process.
On the subject of quality, there has been speculation in the IP community that examiners are being encouraged to reject applications because a lower allowance rate equals higher quality. Let's be clear: patent quality does not equal rejection. In some cases this requires us to reject all the claims when no patentable subject matter has been presented. It is our duty to be candid with the applicant and protect the interests of the public. In other cases this means granting broad claims when they present allowable subject matter. In all cases it means engaging with the applicant to get to the real issues efficiently—what we all know as compact prosecution. (emphasis added)
Why this matters: under the previous administration, USPTO management unabashedly trumpeted success and measured quality in terms of the percentage of US patent applications rejected, infusing the USPTO with a focus on rejecting patent applications. Those of us who have practiced for more than a decade recall that in the late '90's, for example, a greater spirit of partnership permeated the USPTO, wherein standard practice was for examiners and attorneys to work earnestly in cooperation to identify and define the subject matter (if any) that should be allowed. This approach advanced the USPTO goal of compact prosecution (i.e., expeditiously resolving issues of patentability and speeding examination).
If applicants can:
- regain confidence that patentability will be judged fairly and efficiently,
- see reduced pendencies of their patent applications, and
- reduce costs of prosecution due to effective execution of "compact prosectuion" at the USPTO,
patents will better serve their function in stimulating investment and innovation in the US; and inventors and owners of new techology can enter the market with greater confidence and certainty, while saving time and expense.
To be sure, patent attorneys will likewise need to adjust their practices and, in some cases, unlearn bad habits that may have been seen as advantageous or necessary under a disfunctional system. Going forward, applicants who fail to adapt in parallel with changes in examination policy at the USPTO are likely to suffer.
When I have had the opportunity to directly interact with patent examiners at the USPTO, I generally find them to be talented, smart, dedicated and fair-minded--very honorable public servants. There are also a few examiners on Twitter with whom I converse and share thoughts who likewise demonstrate these qualities--one, in particular, who you may see in my stream, though I will refrain from linking to them here, as I suspect they may not want the attention. Accordingly, the only real problems I have perceived in the examining corps are that they have been forced to work under unrealistic and contrived standards and that so many talented examiners have been leaving the USPTO as they gain experience.
If we can break down the institutional barriers to cooperation and efficiency, as Director Kappos appears committed to achieving, I am highly optimistic that patent quality and efficiency of patent examination will greatly improve, thereby benefiting applicants as well as the general public; and the tri-lateral relations between USPTO management, the examining corps, and applicants should also greatly improve, thereby (among other effects) improving the retention of experienced examiners at the USPTO, which will still further improve examination quality and efficiency.
I will continue to monitor and report on these important developments, and as we see these words put into action at the USPTO, watch this blog for thoughts on how patent applicants can best position themselves under this new paradigm. Subscribe to this blog via
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