I previously reported on the PTO philosophy in recent years that high rejection rates equals high patent examination quality. As noted, this philosophy has largely resulted in the PTO’s current budget crisis due to lower revenue from issue fees and maintenance fees. It has also resulted in a higher appeal rate, causing a crisis in the backlog of appeals at the BPAI. It has caused a significant increase in the cost and time required to obtain a patent on many legitimate inventions. Finally, it has further exacerbated the budget crisis by causing applicants to forego applying for a patent because it seems to be futile.
Help may finally be on the way.
Patently-O is reporting on an e-mail that new PTO Director David Kappos sent an e-mail to patent examiners where he attempts to debunk the “patent quality equals rejection” mentality.
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.
When a claimed invention meets all patentability requirements, the application should be allowed expeditiously. … [B]y engaging with applicants early on, we certainly can get to the point more quickly, and efficiently allow those claims that are entitled to patent protection.
The reject, reject, reject philosophy has been around for a few years, so it won’t go away overnight, regardless of the e-mail. It is, however, a huge step in the right direction. He will need to do something about examiner production requirements and the second eyes review in order to fully implement a new philosophy. Stay tuned . . .
