Sunday, November 4, 2007

Two Sides To Patent Quality

Most people think that poor patent quality refers only to patents that are improvidently granted. For example, the patent examiner did not adequately search for the prior art, or failed to appreciate a reference that was before them, or did not apply a reference correctly, or was outgunned by the applicant, or ... Improvidently granted patents are the more important type of poor patent quality, however, I believe that a second and important type of of poor patent quality is patents that should be immediately granted, but are delayed or damaged by inappropriate office actions (I refer to this second type of poor patent quality as Damaged Patents).

Damaged Patents are the product of the USPTO being overwhelmed by the nearly half-million patent applications it is tasked with reviewing each year. How does the Patent Office deal with examining this number of applications? The office has two basic choices: (1) let everything through with minimal examination (characterized by the era when examiners were told it was their job to get patents for their "customers") or (2) let nothing through (unless the examiner is "embarrassed" into issuing the patent - it seems the office is in this mode now). This second approach by the USPTO exacerbates an already huge backlog, creates a much longer patent pendency and Damages patents that should immediately be issued.

Let's assume that an inventor has created a new way to produce hydrogen from water by using RF energy to break down the molecular bonds of the water and a patent application is filed. First, of course, the application is not even substantively reviewed by an examiner for at least two years. Next the examiner, who has just graduated from the 8-month training course, misunderstands the invention and does a search for electrolysis and finds a huge amount of "prior art" to cite in the first office action (3 months later). The applicant requests an interview wherein the invention is made clear to the examiner, who signals that some dependent claims might be allowable. The applicant files amends the main claims to include the dependent limitations (3 months later). The examiner does a new search and finds a reference on a RF generator and cites that plus the electrolysis reference as 103 and goes final (3 months later). The applicant files a RCE and argues over the reference and the examiner issues the patent -- now Damaged (6 months later).

The applicant finally has a Damaged patent that should have been allowed by the USPTO on the first office action based on the first search that the examiner did. Of course, the applicant may file a continuation case to attempt to get the proper scope of claims, but that will delay the process for years to come.

Let's look at a similar case under a scenario where the number of patent applications has been reduced because of an increase of the filing fee. Obviously, in this hypothetical, the applicant would choose to file the application on a technology this important. The examiner, with 5 years of experience in the current Art Unit, having received the application 6 months after filing reviews the application carefully for technical issues -- recognizes the importance of the application and does a careful prior art search. Finding nothing relevant to the claims of the application, the examiner allows the case in three months. The applicant has the patent in under one year.

Again, the fault here is not entirely, nor even primarily the USPTO's, rather the fault is shared with Congress and large corporations filing thousands of unimportant patent applications because the fees for filing allow this abuse of the patent system.

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