The 271 Patent Blog has a good summary of the recent Patent Public Advisory Committee (PPAC) meeting at the PTO. Recall that PPAC was created to advise the Director of the PTO on management of patent operations in the Office.
Several notable items were discussed:
The PTO is experiencing a 7% decrease in patent filings that has resulted in a $140 million budget shortfall. A portion of this amount ($110 million) has been cut from the budget by the hiring freeze.
The optimism earlier this year about Patent Reform legislation is dwindling and prospects for passage appear unlikely in this session of Congress.
Marc Adler, Acting Deputy Director for Patent Examination Policy, and Peggy Focarino, Acting Commissioner for Patents, discussed a number of issues as well.
There was a great deal of discussion of improving patent quality. First, the PTO realizes that patent quality needs to be defined to include application quality, search and examination quality, and prosecution quality. Compliance with § 112′s written description and enablement requirements is a key to improving quality.
Examiners need additional training on how to conduct interviews with applicants to advance prosecution. Examiners need to work to reduce the number of unnecessary continuing applications by not issuing premature final rejections. The current system that provides incentives to examiners for continuing applications needs to be revised to instead provide examiners with disincentives for continuation filings. Finally, examiners need training on how to shorten prosecution by issuing high quality initial Office Actions.
These sound like great initiatives by the PTO. I and others have argued that better enforcement of § 112 (and §§ 102 and 103) would render decisions like Bilski unnecessary. Further, I have seen way too many second and subsequent non-final Office Actions where the examiner simply does a new search and finds new prior art after the first Office Action. This creates unnecessary delay in prosecution and increases the cost for applicants to continue to respond to these Office Actions. The initial Office Action should include all pertinent rejections up front. Finally, incentivizing examiners by giving additional “counts” for continuations and RCEs is in direct contradiction to the PTO’s attempts to reduce or get rid of these filings with the new rules.