Is Prior Art Valuable Service? A Corollary to Searcher Certification
INTRODUCTION
The commercial patent industry, that is the legal part, is comprised of three different types of actor, each of whom individually makes substantive contributions to the pre-application, application, and post-grant patent process. Those actors are the patent lawyer, the patent agent, and the patent searcher. Each actor has a different function or role. The lawyer’s role, at least before the Office, includes writing applications but goes much further, enough said. The agent is an actor whose specific function is to write patent applications. Agents are licensed and usually work with an attorney but can operate on their own, that is, they can authoritatively comment on patents and are held accountable for their work product. This is established by regulation and is based on the idea of valuable service. Neither, the lawyer nor the agent is dedicatedly focused on prior art. The searcher, on the other hand, is by definition focused solely on prior art. Unlike the agent the searcher is appended to the attorney. The searcher is restrained in his or her ability to comment, even on aspects of prior art, least they be accused of practicing law. This too is due to regulation. By virtue of the searchers’ contributory role, they are stakeholders in the system. This writing will look at elementary aspects of prior art as a function, policy issues over the past 10 years, the law that governs prior art, and finally what that may mean for searchers.
PRIOR ART IS A DISTINCTLY DIFFERENT ACTIVITY
Background (of the commercial searcher) The commercial search industry has existed for many decades. People still alive today have clear memories of the business as it existed post WWII. Business models included law firms with their own in-house search staffs, small law firms where the attorneys prosecute but also did search work for others outside DC, and service firms that provided file histories, assignment documents and patent searches. The industry naturally centered in Washington because of the presence of the patent office. The business models have morphed but the activity is very much alive; although it is certainly no longer necessary that the provider be in Washington. The searcher trained in this environment is a generalist, always. The searcher will work in dozens of different technologies, from the simple to the complex, and report results to just as many different individual clients. There is specialization, of course, in the broad areas of mechanical, electrical, chemical or bio-tech. The requirement for entry into the field has always been — can you do the job?
Qualitative (what does the searcher do?)
First, as searchers we deal with words, images, chemical structures etc. We look for concepts expressed in plain language and on paper. Our source materials, patents and non-patent literature, are historical documents. We look backwards for information pertaining to the question we are researching. Because we are patent professionals, the subject matter of our work is technical; but that does not change the fact that we are essentially finders of information. Because we deal in concepts, the most important skill for the searcher is abstract reasoning combined with a strong technical aptitude.
Second, searchers do not solve physical world problems nor replicate lab results. The prior at searcher does not actively engage in engineering or science tasks. The searcher must only comprehend the material in front of him/her and have the cognitive skills to compare, contrast and relate that material with the material disclosed or contained in other documents.
Objective (of the searchers work product)
The searchers job is to identify prior art for various legal or business objectives. While the searcher does not engage in the work of either agents or lawyers, there is functional overlap between the private sector searcher and the public sector patent examiner. The patent examiner is expected to find, interpret, ascertain, distinguish and apply prior art to the claimed subject matter of an application. The examiners search effort is directed toward the goal of making a decision regarding novelty but because of the claims the examiner is really conducting a validity search. The private sector searcher engages in different levels of prior art inquiry namely, patentability, infringement, and validity, than does the examiner, however, the similarity between validity searching and the examiners search function cannot be ignored. In validity and infringement searching the searcher has to likewise find, interpret, ascertain and distinguish prior art “informally” simply to identify the art for the attorney. Often our work returns to the PTO as prior art in an application sometimes it doesn’t. Prior art always accompanies the Accelerated Exam and will be a key component in Post Grant Oppositions.
The attorney, the agent, the examiner all have defined roles within the system. Prior art and the private sector searcher are just out there.
PRIOR ART AND PUBLIC POLICY OVER THE PAST DECADE
In July 2002, the PTO released the 21st Century Strategic Plan. Discussions of prior art were interspersed throughout the document in terms of Shared Responsibility, Mandatory IDS’s, a Four Tracks Patent Examination Process, and Certification of Search Authorities. Clearly, the PTO engaged in much thought defining and articulating the role of prior art. In fact, the original July 2002 Plan provided: “Locating prior art is one of the most important aspects of the patent examining process.”
The 2007-2012 Plan, elaborated further in both the internal and external contexts. Under the rubric of quality, the Plan looked internally, and recognized that: 1) the examination process could be enhanced by improving examiners’ ability to retrieve the most relevant prior art and, 2) acknowledged that classified searching impacts search quality; so thereafter the PTO would support patent reclassification.
In August 2006, the Petition to Make Special procedure was expanded becoming the Accelerated Exam. The AE compelled the applicant to attest that an extensive multi-resource prior art search had been conducted and to include a search report with the application. The search report and references allowed the examiner to proceed practically limited – at the examiners discretion — to the reference documentation in front of him/her. Through 4/12/12 there have been 5185 filed.
On September 7, 2007, HR 1990 was passed by the House. That bill stated, “The Director shall by regulation, require that applicants submit a search report and other information and analysis relevant to patentability.” The Senate version of that bill containing similar language never came up for a vote.
There is no explicit mention of prior art in the 2011 America Invents Act. However, the new rules governing pre-grant submissions and post-grant review have expanded the mechanisms for introducing prior art into any particular case.
The 2015 Strategic Plan discusses “re-engineering” the patent classification system. The re-engineered system would improve patent quality by “…putting the best prior art in the hands of the examiner more efficiently…”
Clearly the rules allowing the introduction of art into the process have liberalized. I think the last decade underscores the implicit recognition that prior art is directly tied to patent quality, however I do not believe prior art got a full airing during the debate over patent reform.
WHAT IS VALUABLE SERVICE
As I mentioned at the beginning, the agents’ number is predicated on the concept of valuable service. The agents’ number is the sole credential to demonstrate patent professionalism. Therefore, valuable service equates to professional credibility and it is absolutely the standard one has to meet in order to be recognized as a patent professional.
The Statute
35 USC §2(d) is the law that grants the PTO the authority to determine who and how a person will be recognized as a patent practitioner. The Statute provides that one be:
“…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
Under the authority of 35 USC §2(d), the PTO promulgated 37 C.F.R. § 10.7(a)(2)(ii) which reads in part:
“(a) No individual will be registered to practice before the Office unless he or she shall:
(2) Establish to the satisfaction of the Director that he or she is:
(ii) Possessed of the legal, scientific, and technical qualification necessary to enable him or her to render applicants for patents valuable service.”
Considerations
Notice that this portion of the statute render applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the office – is reduced in the regulation to — render applicants for patents valuable service. Interestingly, because Congress clearly allowed for “other persons” separate from applicants and “other business” separate from application, they evidentially recognized that there is more to patents and patenting than the skills or function of writing and prosecuting applications.
There is case law that upholds the PTO’s authority to determine who may sit for the exam. The case law is directed to valuable service in terms of writing applications. The regulation suggests that there is no other form of valuable service. On this subject, James Toupin, the former PTO General Counsel commented in April of 2009 that “…the regulation does not specifically define valuable service but that it must include expertise in a technical field to enable a practitioner to prepare and prosecute patent applications and draft specifications or claims of patent applications….” Valuable service is not defined….is indeed, I think, an accurate reading of the case law.
(It should be noted here, that valuable service as constructed was construed long before patents became outright valuable commodities and long before they emerged as important economic drivers. The scope of valuable service has surely shifted since the regulation was first implemented and maybe what was suitable once is problematic now.)
Curiously, under the rule as it is currently construed attorneys are responsible for the searcher’s work product. If a search product is sloppy or substandard and the attorney proceeds based on a flawed product, it is the attorney who faces the consequences. Not I think a good situation for the attorney. This is a result of prior art not being recognized as a separate contributory activity.
Summarizing Policy and Valuable Service:
• Our function is valuable as evidenced by the PTO’s own actions;
• Valuable service as currently defined is limited to application writing. The omission of other business, which clearly prior art is, appends the function of prior art to the attorney.
• Valuable service equates to credibility and credibility is conveyed by passing an exam of patent regulations, e.g. the patent agents’ exam;
• It is within the PTO’s statutory authority to include other business and other persons into the realm of valuable service.
IMPLICATIONS
Regarding certification, the prior art problem as described herein exists independently, although concurrently and in parallel with, the voluntary effort to elevate our profession through a certification scheme. I am extremely interested in advancing the professionalism of our field. Certification has the promise of enhancing the importance and reputation of our function however importance and reputation would be better served by first addressing the problem affecting the industry at its core. Our problem, that is a lack of official acknowledgement, is twofold; 1) the prior art function is not explicitly recognized as valuable by the patent system and 2) it is not explicitly recognized because it is shrouded under another function. I contend that explicit recognition of the search function, by the legal authority e.g. the PTO, is absolutely a necessary condition that must be met in order to achieve anything and everything that certification could possibly achieve.
As we move forward in professionalizing our field, it is important to recognize what our profession is. While a searcher may obtain an agents number, as many do because the number confers professional credibility, the option of doing so does nothing to clearly distinguish the functional role of the prior art searcher from the functional role of the application writing agent. The requirements to be recognized as a searcher cannot be equal to that of an agent because if they were there would be no distinguishable difference between the two. Different requirements regarding the searcher vis-à-vis the patent agent are called for because searching calls upon a different set of skills than those necessary to write applications. Different requirements would reflect the nature, dynamics and long history of the profession as well as continue to draw bright inquisitive people from other academic disciplines
CONCLUSION
We are stakeholders in a system where we have no input. Because of the omission of prior art as a valuable component of the patent system searchers are in effect un-staked stakeholders. Since prior art is valuable to the system, searchers should be expected to know the rules covering novelty or obviousness or how to distinguish a means plus function claim. Chapter 900 of the MPEP (Manual of Patent Examining Procedure) is entitled Prior Art, Classification, and Search. Chapter 2100 is Patentability and Chapter 2200 Citation of Prior Art. The point is there are rules specifically drafted that addresses our work product. Because prior art is tethered to attorneys who must know the rules and because the prior art searcher is not expected to know any rules at all, the searcher along with prior art itself are merely afterthoughts despite their value to the health of the system. I reemphasize, that only through a test of the rules can the searcher, and indirectly prior art itself, be recognized as substantive elements of the total process. Interestingly, neither agents nor attorneys are tested or trained with regard to prior art searching nor are examiners evaluated on their ability or skill at locating prior art.
Because there is a direct correlation between patent quality and prior art, I do not believe that the subject has disappeared as an issue. As long as we are tethered by law to lawyers an open discussion about impact of prior art to the process may never occur. I think we saw this manifest during the patent reform debate when there was no direct discussion on prior art yet somehow it disappeared from consideration. Because patent quality is a function of prior art, the prior art profession needs to ask itself is what we do valuable service? If it is then we should proceed accordingly.