Patent examiners reject proposal to outsource patent searches

A proposal to outsource part of the patent search process is drawing ire from patent examiners, according to the Patent Office Professional Association. The 21st Century Strategic Plan, unveiled last month by Patent and Trademark Office Director James Rogan, details his plan to reform the agency and includes a proposal for contracting out searches for "prior art," which reveal whether an invention is new. Prior art searches must be conducted before the PTO can issue new patents.

On July 24, the professional association, which represents about 3,600 PTO employees, delivered a petition signed by 1,000 patent examiners to the House Judiciary Subcommittee on Courts, the Internet and Intellectual Property, which said that only the PTO should be responsible for patent classification. The professional association also surveyed nearly 2,000 patent examiners, and more than 95 percent of the respondents said that patent quality would decline with separate search and examination functions. "No one understands the U.S. patent system better than patent examiners and their message in the survey and petitions came through loud and clear to keep search and examination together to save the integrity of the patent system," said association President Ronald Stern. But according to Rogan, the PTO has a backlog of nearly 408,000 applications with another 348,000 expected this year. Contracting out the prior art searches could reduce the search time in half by 2008-from about 12 months to six months, Rogan said. Stern said the "synergy" between the search and examination functions would be lost if the two are separated. "Search and examination are integral parts of the same process," he said. Other changes under the agency's proposed reform plan include creating international partnerships for patent searches, creating an electronic patent-filing system and limiting patent examiners to "core government functions." "Despite the push to commercialize federal activities, the patent prior art search, examination and classification remain sovereign functions of the U.S. government," Stern said. "If patentability relies on search results from a foreign patent office, the net effect is to give the patentability determination away to a foreign government." The Patent and Trademark Office has been under fire in the past few months after announcing it would lay off trademark examining attorneys, suspend its telecommuting program and raise fees to patent an invention or trademark a brand name.