I write to submit comments based on a joint project in which I am
involved with IBM, related to Draft \# 6 of the USPTO's Strategic Plan
-- 2007-2012.  I apologize for the tardiness of this letter, but I
misunderstood the timing of the process. 

I write regarding Goal 1 of the plan, "Optimizing Patent Quality and
Timeliness."  The concern is that the dominant focus of the current
draft of the plan on that topic continues to focus on timeliness.  Thus,
the objectives that you identify as strategic responses to this problem
start with a specific five-year goal of lowering the median time of
patent examination to a not-yet-specified number of months.

Faster disposition of patents obviously is beneficial to the process,
especially in areas like software, in which the rapid pace of innovation
makes an early commencement of the patent term crucial for the
protection of valuable inventions.  But there is another important
dimension to quality: that the issued patents themselves satisfy the
demanding standard of the Patent Act.  The Strategic Plan recognizes
this in many places.  For example, the discussion of "planned results"
suggests a desire to lower the patent allowance error rate and also to
develop "quality metrics \* \* \* that increase public confidence."

The Strategic Plan could, however, adopt a more ambitious approach to
the quality aspect of the problem.  Thus, our project advocates the
development of a more scientific process that would put a greater burden
on applicants, with a view to lowering the workload on examiners and at
the same time increasing the quality of the final issued product. 
Specifically, we recommend a two-step Application Quality Initiative
(AQI), in which the PTO would develop an automated process for examining
the quality of applications both as they are originally submitted and as
they develop during the examination process.  At the first stage, the
process would focus on objective characteristics apparent on the face of
the application that are associated in the experience of the PTO with
applications of a low or dubious quality.  If an automated process
determines that an application has a low quality, the examiner could
deny the application with a minimal effort.  The PTO could provide an
explanation (supplied by the AQI software) of the problems with the
application.  The applicant could remedy the problems and resubmit the
application or submit an explanation of reasons why the problems in
those particular circumstances do not indicate an application of low
quality.  At the second stage, during the course of the examination
process, the AQI software could search for a parallel set of "red flags"
that might indicate a potential breakdown in the application process. 
Depending on the cause of the flagged item, the appropriate response
might be to reject the application or to send it to a supervisory
examiner. 

The biggest difficulty in implementing this initiative is coming up with
the relevant application characteristics.  We can think of a number of
possibilities, such as unusually scant specifications or drawings
(normalized by subject matter area), poorly drafted claims (evidenced,
for example, by the use of terms that are not found in the
specification), and an unusually short (or long) inventor disclosure
statement.  The key concept, however, would be for the PTO to rely on
internal knowledge developed from its own examinations.

This procedure has several advantages.  The most obvious advantage is
that it would help examiners to spend more of their time on carefully
prepared applications and less of their time on sloppy applications. 
Moreover, in the long run, applicants familiar with the criteria might
respond by submitting higher quality applications in the first place. 
We also think that the AQI ultimately would improve the quality of the
issued patents, because a focus early in the process on objective
criteria of low-quality applications might lead applicants to abandon
the applications that otherwise might slip through as poor-quality
patents.

Over the longer term, the PTO could use examples of poor applications
and of flagged examination activity as a tool for focusing examiner
attention on those problems, with a view to catching them earlier in the
process.  The idea is that over time examiners would internalize the
items in the AQI as a checklist to inform their assessment of
applications as they proceed through the process, helping them to move
more quickly to dispose of weak applications so that they can focus
their attention on the better-prepared and more meritorious
applications.

Another salient benefit is that aggregate data about trends in the
occurrence of the objectionable criteria would provide a more robust
basis than the PTO currently has for assessing the continuing
improvement of the quality of applications and examination.

Ideally, the PTO could develop the criteria based on examination of the
data generated from its examination of applications.  Presumably the
PTO's examiners readily could identify a set of applications that
generally are regarded as exhibiting either poor preparation in the
first instance or problematic activity during the examination process. 
If so, it would be easy as a matter of statistical analysis to develop a
set of objective criteria that would describe many of those applications
but few well-drafted and well-prosecuted applications.  We of course
would be delighted to assist that development process in any way that
would be constructive.

 

 

Ronald J. Mann\
Ben H. & Kitty King Powell\
    Chair in Business & Commercial Law\
Co-Director, Center for Law, Business & Economics\
University of Texas School of Law\
727 E. Dean Keeton Street\
Austin, TX 78705\
512.232.1357\
512.475.7400 (fax)\
[rmann@law.utexas.edu](blocked::mailto:rmann@law.utexas.edu)