Patent Office Urged to Better Define Quality, Rethink Staff Incentives

The U.S. Patent and Trademark Office in Alexandria, Va. The U.S. Patent and Trademark Office in Alexandria, Va. Flickr user Alan Kotok

The Patent and Trademark Office, at a time of rising lawsuits charging patent infringements, needs to improve quality and better monitor examiners’ work, a watchdog found.

In a pair of reports and staff survey released on Wednesday, the Government Accountability Office said that patent examiners report being pressed for time as they process patent applications without a consistent and clear definition of quality.

“District court filings of new patent infringement lawsuits increased from about 2,000 in 2007 to more than 5,000 in 2015, while the number of defendants named in these lawsuits increased from 5,000 to 8,000 over the same period,” GAO wrote in one report addressing quality in intellectual property protections.

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“Most patent suits involve software-related patents and computer and communications technologies,” auditors noted. “Several stakeholders told GAO that it is easy to unintentionally infringe on patents associated with these technologies because the patents can be unclear and overly broad, which several stakeholders believe is a characteristic of low patent quality.”

GAO credited the agency’s ongoing Enhanced Patent Quality Initiative for some progress. But “USPTO is unable to fully measure progress toward meeting its patent quality goals,” in part for lack of documented guidance – such as glossaries---defining a quality patent to increase chances that it “would meet the statutory requirements for novelty and clarity, among others, and would be upheld if challenged in a lawsuit or other proceeding,” auditors wrote.

Based on last year’s Web-based survey (using 2,669 responses out of a sampling of 3,336 examiners), GAO estimated that 70 percent of examiners “do not have enough time to complete a thorough examination given a typical workload.” What’s more, the agency may not be providing staff with the “right structure, incentives and responsibilities to make operational success possible.”

Federal statutes require that patent applications use clear, concise and exact terms, GAO noted. But nearly 90 percent of examiners always or often encountered broadly worded patent applications, and nearly two-thirds of examiners said that this made it difficult to complete a thorough examination.

The auditors made seven recommendations for how the agency could more consistently define patent quality in guidance, reassess times allotted for examination and analyze current staff incentives.

GAO generally agreed with the recommendations but stressed that it “already has a consistent definition for patent quality.”

A more narrow report on research capabilities and the agency’s monitoring of productivity noted that attrition at the agency has been rising annually since fiscal 2011, reaching 4.32 percent in fiscal 2015. “Both agency officials and examiners told us that when the economy picks up, more examiners tend to leave USPTO and fewer qualified candidates are attracted to the agency,” GAO said.

A key aspect of the examiners’ job that could improve, the report said, is search capabilities to uncover information on whether a claimed invention is unique—“prior art” in the parlance.

USPTO’s counterparts in Japan and Europe, GAO noted, have model methods for tapping quickly into non-patent literature for researching prior art. Though the agency is taking steps to improve its research, it “does not have a documented strategy for identifying additional sources,” auditors wrote. “Without such a strategy, USPTO cannot be assured that its information technology investment will improve examiners' searches” to meet federal internal control standards.

Moreover, the agency still “faces limitations in assessing the thoroughness of examiners' prior art searches, because, for example, the agency has not established goals or indicators for search quality and may not be collecting sufficient information on examiners' searches to assess prior art search quality.”

GAO made seven recommendations for developing strategies and goals for quick and high-quality searches of non-patent literature. Agency managers agreed.

(Image via Flickr user Alan Kotok)

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