AIPLA Suggests Improvements at the USPTO

I previously reported on the patent prosecution costs disclosed by Alan Kasper’s testimony [PDF] to Congress as the First Vice-President of the American Intellectual Property Law Association (AIPLA). In that testimony, Alan suggested the following improvements at the USPTO:

  • Develop a culture within the USPTO to encourage Examiners to propose claim amendments that would, at least in the examiner’s view, distinguish the claimed invention over the prior art. This would eliminate applicant guessing as to what a Examiner considers allowable and permit the applicant to forgo the cost of filing further amendments, RCEs, continuations, or appeals, by accepting the Examiner’s proposal.
  • Encourage the Examiners to resolve the applicant’s technical formality errors (e.g. an incorrectly designated a claim in an Amendment as, for example, “currently amended”) by informal communication and Examiner’s amendment rather than, for example, issuing a “Notice of Non-Compliant Amendment.”
  • Modify “Pre-Appeal Submission” process to avoid having both the Examiner and the Examiner’s Supervisor—both of whom are presumably against finding any error in the Examiner’s action—on the three member panel that evaluates the reasonableness of the Examiner’s position. At least two senior examiners not involved in prosecution of the application should be on the panel. Having both the Examiner and the Examiner’s Supervisor sets up a 2 to 1 panel position against the applicant at the start.
  • Improve Examiner retention through improvements in the diversity and quality of opportunities for professional development.
  • Increase monitoring of Examiner’s work to ensure quality, by for example, triggering an investigation when an application has more than three Office Actions on the merits.

One Response to AIPLA Suggests Improvements at the USPTO

  1. Examiner A March 5, 2008 at 11:10 pm #

    For the first two points, there already is such a culture. I would much rather call the attorney and get an examiner’s amendment to allow a case than write a final rejection that I don’t get paid to write. I will also call an attorney if there are minor claim issues. I agree that Notices of non-compliant amendments are wastes of time, but often those notices are sent by the paralegals before they even reach the examiner’s desk so sometimes we have no control over it.

    I get very few appeals requests but I disagree that the appeal submission process is flawed. The examiner has to be there to explain his rejection. OK maybe it’s unnecessary to have the boss there, but, if anything, having more people there makes the case undergo more scrutiny. We are very careful to make sure that a rejection is reasonable before proceeding to the board.

    Examiner retention is a problem and the pressures of the production system is intense. I don’t anticipate things getting better unless we get more time per case (which won’t happen).

    As for quality monitoring, we already hugely afraid of the quality checking people and we don’t get paid for the intermediate actions so there’s already lots of incentive to get things done write the first time.

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