Changes Coming to USPTO--Part VI: Rejection Mentality and Work Sharing
Posted by Bob Sayre on Thu, Nov 05, 2009 @ 08:20 AM
Just_n_Examiner from the USPTO is doing a fine job keeping us posted with inside perspectives on changes at the USPTO under new Director David Kappos (left). In yesterday's post, the Examiner relayed some of the latest posts from Director Kappos's internal blog at the USPTO.
The following two reported points from Director Kappos will be of particular interest to patent applicants.
Reversing the Rejection Mentality
First, Director Kappos offers more insight as to how he will change the "rejection mentality" at the USPTO, which has led to the dramatic plunge in US patent allowance rates over the past few years. When listing important benefits of changes that have not yet received much notice, Kappos reportedly cited:
"Reducing examiner reluctance to allow applications. Due to low allowance rates in certain areas, Primary Examiners have less margin for error since their PAP [Performance Appraisal Plan] has an error rate standard. Since the error rate is based on the number of applications allowed, if very few applications are allowed only one error may take the employee out of the 'Fully Successful' rating level. The change provides that an examiner won't be penalized performance-wise based upon a single clear error in Patentability Determination."
In other words, US Examiners no longer need worry about receiving a poor performance appraisal on the basis of allowing a single patent application with which a reviewer may disagree. My prediction: this small change has the potential to trigger a significant shift away from the frequent reluctance of some US examiners to allow patents. I will aim to continue posting charts of the US allowance rate, such as the one linked to above; and I hereby forecast that the curve will soon change direction and shift back upward.
Promoting Access to Examination Results from Foreign Counterparts
Second, Director Kappos elaborated on the administration's opposition to the "sovereign function" language in the current patent reform legislation, which would would block the US from participating in worksharing initiatives with overseas patent offices. Director Kappos reportedly indicated:
"[W]orksharing should not be confused with taking examination responsibility and decision-making away from US examiners. Worksharing does not take examination responsibility or decision-making away from US examiners; it provides US examiners with another tool, like all the other tools we use, to enable our examiners to do the best possible job in examining applications having foreign counterparts."
And I think that Just_n_Examiner gets it exactly right when he/she says:
"The thing that has struck me about the whole Patent Prosecution Highway from the start is the fact that all this seems to do is to facilitate what you'd think examiners would be doing anyway.
If you're examining an application, your search would likely uncover any related applications, whether they are US or foreign applications (at least the major Patent Offices), and once found, it certainly makes sense that you'd want to check out the art that was cited by the examiner during prosecution in those foreign patent offices."
In short, expect the USPTO take more initiative in leveraging the search and examination results from foreign counterpart applications. I have found that leveraging a strategy of directing the examiner's attention to favorable rulings as to the patentability of related foreign applications examined by the European Patent Office, by the Korean IP Office, by the UK Patent Office, etc., to be very successful in securing allowances of US patent applications. As the US institutionalizes these practices, I expect there will be even more opportunities to benefit in the way of obtaining expedited allowances of claims that meet the basic requirements of patentability; and US patent examination, overall, should be executed more efficiently and expeditiously, which may help to reduce the increasing backlog of US patent applications still awaiting examination.
As always, I invite you to contact me to discuss how these and other strategies may help to secure patents for your institution.