Later today, the Senate will hold a hearing on how Congress can help prevent the issuance of poor quality patents. I recently testified at a hearing on the STRONGER Patents Act and patent quality was one of the topics discussed. In fact, in my responses to questions for the record from Sen. Tillis, I addressed exactly this topic. In particular, I identified proposals from one of today’s witnesses—Prof. Melissa Wasserman—to provide examiners with more time to conduct examination and to restructure USPTO fees to reduce USPTOUnited States Patent and Trademark Office. See also PTO. reliance on post-grant fees.
The use of randomized trials for examination improvements, suggested by another witness at today’s hearing, Prof. Colleen Chien, would also help ensure that changes to examination can be shown to have positive impacts, rather than simply asserting that the changes are necessary. Prof. Chien has also suggested that there are subtle failures in the U.S. examination process that can be detected by comparison to peer patent offices such as the European Patent Office. Once detected, procedures can be implemented that will, for example, reduce U.S. examiner unwillingness or inability to rely on non-patent prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed..
These changes, combined with ensuring that the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. process for conducting post-grant reviewA procedure by which a third-party may contest issuance of a patent at the USPTO within a short period (9 months) after issuance. Introduced to the U.S. by the AIA. The EPO has a similar procedure. of patent validity remains available, would help prevent the issuance of marginal patents.
My detailed response to Sen. Tillis’s question continues below.
CCIA strongly supports the goal of improving patent examination in order to ensure that the patents that issue from the USPTOUnited States Patent and Trademark Office. See also PTO. fully deserve their statutory presumption of validity. While a perfect system in which invalid patents are never issued is impossible, it appears very likely that the present system could be significantly improved. One of the best proposals is also the simplest—the USPTOUnited States Patent and Trademark Office. See also PTO. should provide examiners with more time to conduct examination. There is empirical evidence that the time constraints placed on examiners result in the allowance of marginal patents. This proposal does not require additional statutory authorities. In fact, the USPTOUnited States Patent and Trademark Office. See also PTO. has proposed a review of examiner time allocations in its 2018-2022 Strategic Plan and could easily increase examiner allocations as part of this process. This would likely decrease the issuance of marginal patents.
Another simple proposal is also within existing statutory authorities. The USPTO’s current fee structure likely contributes to the issuance of marginal patents. In particular, the USPTOUnited States Patent and Trademark Office. See also PTO. does not recover the full cost of examination using its examination fees, but instead relies on issue fees and maintenance feesFees for maintaining in force a patent based on an application filed on or after December 12, 1980. See MPEP 2500 for more. to cover the full cost. Because of this, if an insufficient number of patents issue in a given timeframe, the USPTOUnited States Patent and Trademark Office. See also PTO. will not receive enough fees to cover its cost of operations. Empirical evidence suggests that this may contribute to the issuance of marginal patents. The SUCCESS Act renewed the USPTO’s authority to set and adjust its patent fees. Modifying the USPTOUnited States Patent and Trademark Office. See also PTO. fee structure to recover more of the cost of examination at the time of examination, rather than after issue, would be within the scope of this statutory authority, and would be likely to decrease the issuance of marginal patents.
The USPTOUnited States Patent and Trademark Office. See also PTO. Director is actively investigating ways in which machine learning and artificial intelligence might be employed to increase examination efficiency. CCIA supports this investigation, but it is unclear within what time frame this may provide serious impact and it cannot be relied upon as a sole method of increasing examination quality.
Finally, CCIA again commends the USPTOUnited States Patent and Trademark Office. See also PTO. on its transparency and commitment to making available data. That commitment has enabled much of the empirical research which has suggested these avenues for improvement. Maintaining the access it has historically provided will help ensure that the next generation of research into examination quality and USPTOUnited States Patent and Trademark Office. See also PTO. operations can provide useful policy recommendations founded on empirical evidence.
