How does one determine whether the PTO has properly examined a particular patent or application? One way is by independently determining whether the application was properly granted or rejected. Was a proper search conducted? Should the claims have been allowed? Did the PTO miss certain prior art? These determinations are generally made on a post hoc basis in a reexamination or invalidity challenge in litigation. The PTO needs a way to determine patent examination quality at an earlier stage in the examination process. It has been using a quality measure in recent years to determine an error rate. Director Kappos realized that the PTO needed to update the metrics used to make this determination.
On Friday, the PTO announced new quality metrics for patent examination. The new metrics, which went into effect in FY2011, were a joint effort between the PTO and the Patent Public Advisory Committee (PPAC) and culminate a long process of public comment and hearings. The new metrics focus on seven distinct areas.
Final Disposition Compliance Rate
This metric was one of the PTO’s prior measures that has been modified. The PTO will conduct a random audit of applications for which a notice of allowance or a final rejection has been mailed.
The PTO will review the final disposition of the application using a clear error standard. When a claim is allowed, a clear error means that there was an unreasonable failure to make a rejection for one or more reasons provided in the patent laws. When a claim is finally rejected, a clear error means that the rejection is unreasonable. This means that it is not enough that the examiner’s supervisory patent examiner (SPE) would not have followed the course of action undertaken by the examiner. The examiner’s action must be unreasonable for a clear error to have occurred.
The review will include whether final rejections were proper or premature, whether the rejection was properly maintained over the applicant’s response, and whether the disposition could have been handled by an interview. Sampling is conducted by the PTO’s Office of Patent Quality Assurance (OPQA). OPQA has the power to rescind allowances and correction to final rejections.
In-Process Compliance Rate
A second metric used by the PTO has also been modified. This review is similar to the final disposition review, but instead reviews applications that have not yet received a final disposition. The review will generally occur after the first office action on the merits. Again, the standard of review is for clear error.
The PTO is looking for instances where the error will result in unnecessary expenditure of resources by the applicant or the PTO to correct the error. These would include a second non-final office action, reopening prosecution, or RCEs.
First Office Action on the Merits Search Review
A new metric added by the PTO is a review of the examiner’s initial search. The PTO will randomly sample a number of applications where a first office action has been mailed. Factors used in this review are whether prior art from another patent office was properly considered, whether the examiner carefully considered prior art submitted by the applicant, and whether the examiner’s search included the inventive concepts of the claims, the proper classifications were searched, and whether the search was properly recorded. The search is measured against a list of factors that make up the PTO’s best practices to determine a score for the initial search.
Complete First Action on the Merits Review
Another new metric is a review of the complete first office action. This review will be in much greater detail than the in-process application review. The PTO believes that high quality first office actions can significantly reduce patent pendency.
The office action is measured against a list of factors that make up the PTO’s best practices to determine a score for the initial office action. These factors include proactive use of interviews on the part of examiners, propriety of all rejections, and compliance with all laws, rules, the MPEP, and PTO practices for office actions.
Quality Index Report
The PTO will perform a statistical analysis of applications to determine whether there are trends indicative of quality concerns. These include reopening of final rejections, multiple non-final office actions, filing of RCEs, late restriction requirements, and others. The PTO believes these events are harmful to reducing patent pendency and seeks to determine the frequency and reasons for such events. The PTO is also measuring office actions per disposal as a factor in this measurement.
External Quality Survey
The PTO conducts a quantitative analysis of results to surveys of patent applicants and practitioners regarding the patent application experience. The surveys have been conducted regularly and request information regarding examination quality from the stakeholders. Some surveys will address particular aspects of the examination process, such as examiner interviews.
Internal Quality Survey
Next, a survey will be conducted of PTO staff, including examiners and SPEs, to determine whether they have particular concerns or see particular trends affecting patent quality. The survey will request the examiners’ experience regarding the quality of claim drafting, including breadth, definiteness, and whether the claims capture the essence of the invention.
The PTO will use this information to determine and report an overall quality metric at the end of each year and the progress toward patent examination quality goals.
The attachment, linked above, provides greater detail as to the factors that will be included in each quality metric and samples of surveys the PTO will use.
This new examination quality initiative by the PTO is another huge step forward for the adminstration of Director Kappos. He has worked much more closely with stakeholders in PPAC and with applicants and practitioners to develop these metrics than any previous administration. Hopefully, these can result in the elimination of needless additional non-final office actions, late restrictions, and unnecessary RCEs, all of which slow down the examination process. This will result in progress toward the overall goal of reducing patent pendency while maintaining or increasing patent quality.