Promoting the Progress and Ensuring Patent Quality Through Rigorous Policy Evaluation and Piloting

Article I, Section 8, Clause 8, of the United States Constitution grants Congress the power "to promote the progress of science and useful arts.” The core function of the US Patent and Trademark Office is to determine what inventions truly represent progress in view of the prior art. While to date most conversations about patent quality have centered on back-end measures, like inter partes review, or the use of weak patents over abstract ideas to get injunctions, in this testimony I make three arguments. First, more attention should be paid to the most important, front-end tool that the patent office has to issue valid patents: prior art vetting. While 11%-15% of office actions involve section 101, over 90% of patents are subject to a prior art rejection and my research suggests that there is a gap between the USPTO examiners and others and that this gap is correlated with outcomes. Second, the USPTO should use rigorous pilots to create hard evidence for hard decisions: There are many unknowns with respect to patent quality, and it would be premature to adopt wholesale some of the suggestions being made. However, the USPTO can fill these gaps in knowledge by being much more rigorous and deliberate in its evaluation of past and future policy pilots, using causal inference and other statistical tools to estimate, when it rolls out or pilots changes or interventions, their impact. Third, consider not only time, but team, fee and other quality levers: the USPTO and Congress should take an expansive view of rigorous piloting to ensure patent quality looking at a variety of levers including: a) Time: The USPTO already has tried giving examiners more time, for example, when it implemented various Second Pair of Eyes programs over the years, and more counts were given to examiners. It also tried and is currently trying a number of different approaches to improving access to prior art. These should be evaluated rigorously. b) Team: The USPTO has smartly worked to provide not just more time but more “team” to Examiners, with foreign examiners (through the Global Dossier), applicants and industry (through programs like STEPP, PETTP, SEE and the Crowdsourcing prior art, 3P prior art submission, Track One, Prior Art Partnerships), other US examiners (through collaborative search efforts). We must use rigor to learn from these interventions. c) Prior Art Curation/IDS Policies: Examiners need context and curation, not just references. Though both contain prior art, large IDS are much less useful than carefully crafted international search reports and PTAB petitions. More rigorous policy attention should be paid here. d) Defensive Only Patents/Maintenance Fees: Most patents are held for defensive reasons and don’t need to be “litigation grade.” It’s not always known upfront which patents these are, making front-end gold-plating proposals challenging to the point of being unworkable. As described in my Article, Opening the Patent System, the USPTO should pilot offering a “back-end lead plating” option, what I call a “defensive only” patent option. Though this idea may sound novel, it’s not, it’s a version of the License on Right patent option that Germany and England offer, in the form of a discount on maintenance fees in exchange for a disclosure that the patent is being held for defensive reasons only. We can learn from prior sector commitments like OIN and LOT to perfect the US version for piloting. e) Continuations Practice: The USPTO examination process has a high tolerance for examiner mistakes, because it allows applicants to refile their rejected applications, and in many cases, get these cases allowed. While the practice limits the negative consequences associated with any bad Examiner decision, it makes Examiner inconsistency and mistakes tolerable, in turn, driving lower patent quality and satisfaction. Let’s test out ways to not only encourage but compel compact prosecution, for example by publishing grant rates on continued applications or making sure information on repeat filings is available to examiners. f) Inclusion Pilots: The applications of women and small and micro entity inventors have a lower success rate, with perverse distributional consequences including the higher application, lower grant rates to discounted entities and a higher grant rate to Asian female vs. US female inventors, my research suggests (see figures below). My paper, Rigorous Policy Pilots the Patent Office Could Try, suggests pilots to get at the root causes of these issues.