Is Patent Quality Attainable?

Is Patent Quality Attainable?

Introduction

My name is Robert Grantham.  I’m a commercial searcher and I’ve been in the patent searching business for than a ¼ century.  A commercial searcher, once called a public searcher, conducts searches for multiple clients in a variety of industries.  I bring this up because the membership of PIUG is mostly comprised of corporate searchers, that is, you guys may do search work for a company and that company’s product line.  What I’m going to talk about is presented from the viewpoint of a commercial searcher.

This presentation is premised on the idea that patent searching regardless of the objective is a separate independent substantive activity in the patent process. A focused patent search is indispensable to patent quality as contemporaneous events show.  Searching is not prosecution, and it is not examining; both of which are the application of patent law and both of which facilitate the process of defining claim boundaries.

PTO rules are silent on the act of searching.  Within the public sector searching is a function for the examiner and within the private sector a function for the agent/lawyer.  Right now there is ongoing debate on how the patent office can to improve patent quality by improving the search product produced by examiners.  The patent quality debate focuses on the examiner because only the PTO is responsible for prior art.  Because of the entities engaged in this debate (lawyers. academics, PTO officials) the discussion circles around prior art as a product, for instance best art, and fails to see the process, that is, how do you get to the best art which is searching.  This is todays dynamic.

I think that the prior art system is ripe for reform.   

I am going to discuss a pair of GAO reports that came out in June, followed by a quick talk on how low quality patents reflect a current state of affairs  I will then talk briefly about the private sector and end with a pair or rules that impact searching..   

GAO Reports

This past June the Governmental Accounting Office (GAO) released a pair of reports directed to patent searching and patent quality.  There are the titles.  Together the reports shine light into PTO culture.

The paper on searching lists a variety of challenges faced by examiners. 

• quantity of prior art;
  
• the art that applicants submit with their applications;
• the availability or some types of art;
• unclear applications;
• time necessary to search;
• search tools;
• misclassified applications;
  
• technical competence.

As you can see these are challenges that we all here today working in the private sector also face except for applicant submissions.  I’m going to come back to technical competence.   

In addition, the paper compares search practices at the USPTO with practices at both EPO and JPO.  The paper concludes by identifying corrective steps that the PTO has taken while acknowledging limitations inherent with some of the actions.  Interestingly, we learn from the GAO searching report that the EPO separates the search function from examination function by using a three person team where one searches, one examines and one oversees.

The PTO corrective actions that the PTO has taken so far include: 

• leveraging foreign patent offices;
  
• submission from third parties,
• improved search tools;
• monitor examiners searchers;
• evaluate allotted time; and
  
• strengthen technical competence.  

The primary takeaway from the analysis on searching is that the PTO has no definition for the idea of “thoroughness” even though, according to the paper, PTO regulations require a thorough search.

The paper on quality begins with the observation that due to low patent quality patent litigation has increased.  The paper identifies five opportunities to improve quality:

• the term patent quality needs to be defined;
• reevaluate he allotted time per case
• reevaluate incentives related to production;
  
• study PTAB decisions; and
  
• evaluate other policies. 

The primary take away from this paper is that tem “patent quality” needs a consistent definition.

Summarizing, these papers do a good job of identifying deficiencies at the PTO.  They do not on the other hand get to the core of the problem with prior art or searching.  The tone of the prior art conversation that I see, treats prior art as a product while the act of obtaining the product is ignored.  The papers offer better efficiencies to the status quo but do not suggest a path forward where there is a clear focus on the act of finding prior art

The Current State 

The problem with low quality patents is addressed by the America Invents Act which was passed in 2012.  The law created a new procedure called Inter Parties Review (IPR).  In short, IPR’s constitute trials where patent validity is determined. The trials are held at the PTO. The PTO employs a Broadest Reasonable Interpretation (BRI) standard which is the standard used at the PTO for everything.  BRI has a lower threshold to prove invalidity than does “ordinary meaning” which the standard used by the circuit courts.  IPR’s can only be brought on two grounds: 102 (anticipation) or 103 (obviousness).  That is IPR proceedings are absolutely about prior art.  

What do IPR’s tell us about prior art?  We don’t know much yet because the issue hasn’t been studied.  Hopefully such a study will be forthcoming.  However, based on a spot check we can speculate that a study that asks — how the prior art of record was contributed to the patent — will find that a thorough search was ignored by the applicant and short shifted by the examiner.  

For instance, the patent to Cuozzo (6778074) which incidentally was the very first IPR provides an example of how a search is used to convince a hopeful inventor that he or she should proceed with an application.  The agent, when you look at the record, apparently conducted a quick search and did not find any problem art.  The patent examiner found 2 pieces of good art in a 12 minute search.  In the IPR, the petitioner submitted three expired patents as new prior art and the patent was found invalid. The new prior at was found, I assess, through a manual search when someone actually looked for it.

Another example, Larson, et al. (8504697) is a case where over 1300 documents were cited by the applicant.  The patent was overturned based on two references submitted among the 1300.  In comparison, the examiner searched for 28 minutes.  Again, the prior art was identified when someone actually looked at it.  The problem of excessive submissions was identified by GPO as a challenge for examiners.

IPR’s, I predict, will exposed the overall lack of patent searching by both sides in many issued patents.  I will note here that studying IPR’s for insight is a suggestion made by the GAO.

A public understanding of searching as engaged in by the private sector is compromised by a general lack understanding of what the activity is.  For example, in a recent commerce department IG report on time abuse at the PTO, the IG commented that “…finding prior art has become easier because of the internet.”  There is no data to support that comment. This, in my mind, is a very good example of how the act of searching is marginalized and demonstrates how people generally do not know what it is.  The IG asserted an opinion as fact.  

The patent office has made a single search proposal to address the act of searching.  Using their own words, I quote, “….an automated pre-examination to find the best prior art.”   This suggests, in my mind, no human searching at all.  I fully expect the capabilities of Watson to one day reach this job but it’s not there yet and it’s not going to be there tomorrow.

Lessons from the Private Sector

The business activity of commercial searching has been in existence at least since the end of WW2.  The GAO reports compare searching practices between the US and EPO/JPO however the reports do not ask if the US private sector with its long history of patent searching can provide insight.  We can.  Patent examiners who are public sector searchers search part time in contrast to private sector searchers who search full time.  This is important because a high quality “thorough” search will necessarily be provided by people who are professional full searchers

1. A patent searcher is a generalist.  As I said at the beginning we commercial searchers typically work in multiple inventive areas on a day by day basis.  The significance of this feature of commercial searching is that the exposure to different technologies drives knowledge of the manual of classification which is a significant tool of patent searching.  It takes 2 years to train a searcher.  
2. Searching is qualitative work.  We evaluate printed documents against invention disclosures, if the objective is patntability.  We look for ideas expressed in words.  The cognitive skill that unites us is abstract reasoning.  The work is not quantitative and we do not solve technical problems.  Both GAO reports mention technical competence as a problem.  The idea is that a more advanced technical degree will make a person better at finding prior art.   Why?  This clearly shows me that the people looking at searching and making policy suggestions about it do not actually understand what it is.
3. We understand time requisites.  On this matter both GAO reports mentioned evaluating allotted time.  Evaluating time in the current context of case disposal won’t get to the issue of how much search time is required for a “thorough” search.  With the proficiency that is gained by searching every day we know from experience the time required to conduct a reasonably thorough search.  At a recent a recent Santa Clare – Duke Law Conference on Patent Quality, held September 9^th,  it was mentioned that the EPO searches 8 – 12 hours per case while the PTO searches 4 – 5 hours.  8 – 12 hours seems about right to me.
4. Our objective.  Patent examiners search for a reference to apply to a claim. The private sector searcher attempts to build a body of knowledge to support or define the invention.  The different search objective affects the product.

PTO Regulations

PTO rules are silent on the act of searching.  However there are a pair of rules directed to the private sector that combined highlight a fundamental cause of the prior art/searching quandary.  

37 C.F.R. 1.56 is the Duty to Disclose Information Material to Patentability

This rule addresses fraud perpetrated on the Office by an applicant or applicants’ representatives. The key phrase in the rule is “… a duty to disclose to the Office all information known to that individual to be material to patentability…”  It because of this rule that the examples I cited above happen.  

In Cuozzos’ case the representative did some kind of searching, found tangential art, and filed an application.  The representative, in this case, submitted all of what he knew to be material.

In Larsons’ case the applicant filed 1300 documents. There is no way 1300 documents are material to a single application.  Inequitable conduct produces a strong fear for attorneys and their clients so sometimes the applicant will just submit everything they have in their files so as to avoid the accusation that they intentionally didn’t discloses relevant material.  

This rule appears to encourage applicants to not search.

37 C.F.R. § 10.7 is derived from Statute 35 USC §2(d).  The Statute grants the PTO the authority to determine who and how a person will be recognized as a patent practitioner.  The Statute provides the wording;

“…possessed of the necessary qualifications to render applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the office….”

The Regulation provides the wording: 

Possessed of the legal, scientific, and technical qualification necessary to enable him or her to render applicants for patents valuable service.”

The regulation erases “other persons” “assistance in presentation” and “other business” and only patent applicants is let standing.  Therefore, the only function determined to be valuable to the patent process is prosecuting applications.  Because of this rule searching is appended to the attorney.  This rule only mirrors what the PTO did in-house where searching is appended to the examiner.

Things to Think About

The situation that searching finds itself in right now is due the fact that searching follows a 200 year old business model.  Searching is core to patent quality and it makes no sense to pile that responsibility onto a person also learning patent law and then expect the person to thereafter do both proficiently.  Because patents are property it also makes no sense that applicants should expect the presumption of validity for a matter where they don’t do their own due diligence.  There should be a creative middle ground in there somewhere. 

So can quality patents be attained?  I don’t believe that anything will change unless the PTO steps outside current orthodoxy.  

• The search function needs to be separated from the examination function.  The EPO demonstrates the viability of that approach.  However their modal might not be appropriate in the US.  In the US, changing the “valuable service” rule would fulfil the law and bring “other persons” and “others business” back into the equation.  That act would publically carve the niche that is searching.  They could also reword the Duty to Discloses rule so that it is directed to actual cheating.  The GAO did suggest evaluating other policies.
• At the aforementioned Santa Clara – Duke Law Conference on Patent Quality the Director of Patent Quality at the USPTO conceded that defining patent quality was difficult.  However, because of IPR outcomes, it is clear that focused support at the beginning of the process is where to look first.  In this regard, the PTO and stakeholders should ask themselves what is purpose of the cited art section on the face of patents.  The question deserves an answer.

 Is there a roll for PIUG? 

• We are the only organization that can speak authoritatively on the subject.
• The opportunity to assert ourselves won’t last long.  There is wide fear that searching is going away.  I’ve seen the sentiment expressed in our own discussion groups and in private discussion with colleagues.