In February 2015, the USPTO launched an Enhanced Patent Quality Initiative with the goal of improving work product, metrics for measuring patent quality, and customer service.1 To implement this initiative, the USPTO created 12 EPQI programmes.2 As detailed in this article, only a few of the programmes are still in place, but they have all influenced the way the USPTO operates.
Several of the EPQI programmes were directed to better education and training of examiners. First, the Clarity of the Record Training ran through the USPTO’s fiscal year 2016 and offered examiners a series of training courses on the various patentability rules. The training focused on educating examiners on the requirements and developing case law regarding section 101 (subject-matter eligibility) and section 112 (written description, enablement, definiteness, and functional limitations of claim language). These were small-group training sessions that were led by a core group of trainers and designed to be interactive. Although the official Clarity of the Record Training initiative ended, the USPTO plans to continue offerring similar sessions in the future. A second set of training sessions made up the Clarity of the Record Pilot programme. In this programme, randomly selected examiners, with at least two years’ experience, were provided tips on best practices for claim interpretation, providing reasons for allowance, and drafting interview summaries. The programme ended in August 2016, and the USPTO is analyzing if and how this programme should be implemented for the entire examining corps. A third set of training sessions were part of the EPQI’s Scientific and Technical Information Center (STIC) Awareness Campaign. The STIC is a resource centre for all examiners and was established by the Patent Act 1836,3 but has been underutilized in recent years. The STIC Awareness Campaign included a computer-based training series, technology centre roadshows with STIC staff visiting each technical centre, and participation in the USPTO’s Patents Training at Headquarters Expo. The Campaign ended in August of 2016, but the STIC has announced that it will incorporate several of its efforts from the Campaign into its standard operating procedures. In addition to the training sessions, a fourth initiative, the Interview Specialist programme, was also launched. This programme identified experts in each technology centre to assist with interview logistics.4 The experts were well versed in USPTO interview policy and procedure and were available to provide guidance on the format of the interview and assistance in setting up, for example, WebEx interviews or public interview rooms. This initiative is ongoing with the goal of improving customer service by preparing examiners for interviews and reducing the technical issues that can derail an interview and possibly delay prosecution.
Some of the EPQI initiatives were designed to evaluate innovative prosecution proposals. The Post-Prosecution Pilot (P3) programme ran between 11 July 2016 and 12 January 2017. The CIPA Journal reviewed this programme in detail,5 but in brief, it allowed applicants to provide oral arguments to a panel of examiners after a final rejection and before appealing the rejection. After arguments, the panel would then render a decision. About 60% of the decisions resulted in the panel maintaining the final rejection, while around 20% of the decisions reopened prosecution and about 20% resulted in allowances.6 The P3 programme was not extended past its initial conclusion date, and there is no word from the USPTO on how the information from the P3 programme will be used to improve the USPTO’s procedures. Another programme reviewed by CIPA Journal,7 the Quick Path Information Disclosure Statement (QPIDS) programme, was also reevaluated as one of the EPQI initiatives. The QPIDS programme started in 2012 as a way for applicants to submit newly discovered references to the USPTO without withdrawing an application from issuance after paying an issue fee. The USPTO now receives approximately 3,000 QPIDS requests per year.8 In re-evaluating the QPIDS programme, the USPTO considered changing the rules to make this programme permanent, but decided that it would be too time-consuming to do so. Instead, the USPTO decided to continue with the programme as is.9
The EPQI programme also included the unique Topic Submission for Case Studies programme, which allowed the public to submit topics to be researched by the USPTO. The idea behind this programme was to address the issues that applicants and practitioners identified as needing the USPTO’s attention. The USPTO received over 135 submissions and selected six subjects to analyze. Three of the topics involved evaluating section 101 rejections (subject-matter eligibility), one topic involved the motivation statements for section 103 rejections (obviousness), and two topics involved section 112 rejections (written description and functional claim language).10 Although the USPTO expected to publish all of the study results "no later than March 2017,"11 it has not yet done so.12 Some information on three of the studies was published as part of the 13 December 2016, Patent Quality Conference,13 but it is unclear when the full results will be released. It is equally unclear what steps the USPTO will take in response to the results. However, given the USPTO’s continuing interest in working with stakeholders and providing more resources to examiners, we expect to see the USPTO to incorporate at least some of the feedback in future programmes.
Finally, the 12 EPQI initiatives included several technical and procedural upgrades. For instance, the Design Patent Publication Quality programme implemented a new process for publishing design patents that improves the image quality for them. The Post-Grant Outcomes initiative began notifying examiners in April 2016 when they are examining an application related to a patent being challenged in a post-grant proceeding. In August 2016, the Post-Grant Outcomes initiative was enhanced by providing examiners a desktop viewer application that allows them to view the contents of the record of the proceeding and access any cited art. Based on the success of this programme, the USPTO is looking to expand it and include notice for reexaminations and district court cases that are related to the patent application.14 To help analyze the prosecution process, the Clarity and Correctness Data Capture project created a single comprehensive Master Review Form (MRF) to capture data about completed office actions. The new MRF replaces the two separate forms that were previously used by the Office of Patent Quality Assurance and the supervisors of the technology centres. The two separate forms made it impossible to aggregate the data; however, the new MRF solves this problem. The EPQI’s Quality Metrics initiative set out to replace the Quality Composite Score, which had been used to evaluate examiner’s work since 2011. The new quality metrics include product indicators to measure the correctness and clarity of office actions, process indicators to measure examiners’ efficiency and compliance with USPTO processes, as well as perception indicators to measure employees’ and applicants’ opinions about the USPTO’s work.15 Although some metrics for these indicators have been developed, the USPTO is still working on creating a complete set of analytics to measure the quality of examination.
The final programme of the 12 EPQI initiative is the Automated Pre-Examination Search Pilot, which is intended to eventually provide examiners with the results of an automated search of the prior art before the examiner begins a manual search. The USPTO decided to develop proprietary software, which has been under development since July 2016. Initial tests of the search tool have shown that in approximately 33% of the cases, the software capable of finding at least one reference cited by the examiner in an office action. Thus, the automated results may not only help an examiner learn about a field and develop more targeted search terms for a manual search, they may also provide art that the examiner can use in a rejection. Furthermore, because the search is automated, it does not cut into the time allotted to the examiner for examination. The USPTO plans to launch a pilot programme for this initiative sometime in 2017.
With only a few remaining programmes, the EPQI appears to be ramping down. There is reason to believe, however, that more programmes may be added. The EPQI was a brainchild of Michelle K. Lee,16 who was the USPTO Director when EPQI was announced during the Obama administration. Whether Director Lee—an Obama appointee—would remain in her role after Donald Trump took office remained unanswered question for several months into the new presidency. The USPTO recently confirmed that she is, and presumably will continue to be, Director of the USPTO.17 Director Lee has long been a supporter of the USPTO’s patent quality initiatives,18 so with her status settled, there may be an uptick in the number of these EPQI programmes in the near future.
Even though most of the 12 EPQI initiatives have or are close to concluding, applicants looking to become more involved in the USPTO’s operations can still participate in the EPQI’s ongoing programmes. For those new to patent law, the USPTO developed Stakeholder Training on Examination Practice and Procedure (STEPP).19 The STEPP runs three-day courses aimed at explaining the USPTO’s rules and procedures to inventors or new patent practitioners. These programmes are free, and they are held throughout the year at both the USPTO’s main Alexandria, Virginia campus and at its regional offices. For more experienced practitioners looking to influence the USPTO’s operation, the USPTO has begun hosting Patent Quality Chats,20 which are monthly webinars covering topics ranging from the rationale statements in obviousness rejections to how to properly fill out an application data sheet (ADS). The USPTO leaves approximately 20 minutes at the end of each session to answer individual questions. The Patent Quality Chat webinars are also free and are open to the public.
These 12 EPQI programmes are a part of the USPTO’s ongoing commitment to improving the patent process. Several other USPTO initiatives, such as the Automated Interview Request Tool and the Collaborative Search Pilot,21 fall outside of the 12 EPQI programmes but are also designed to further the USPTO’s goal. Even if no more programmes are added under the auspices of EPQI, new initiatives, and new opportunities for practitioner involvement, seem likely to continue.
Endnotes
1 Enhanced Patent Quality Initiative Pillars, available at https://www.uspto.gov/patent/enhanced-patent-quality-initiative-pillars
2 Enhanced Patent Quality Initiative, available at https://www.uspto.gov/patent/initiatives/enhanced-patent-quality-initiative-0
3 Pub.L. 24–357, 5 Stat. 117, enacted 4 July 1836 (establishing a library of prior art to assist examiners).
4 A list of the current interview specialists can be found at https://www.uspto.gov/patent/laws-and-regulations/interview-practice/interview-specialist.
5 Tridico Ph.D., Anthony C., Marks, Jessica L.A., Sommers Ph.D., Erin M. "Quality Patents," January/February [2017] CIPA 19.
6 Enhanced Patent Quality Initiative (EPQI): Program Results at p.18, from Patent Quality Conference: Advancing Quality Across the IP Community, available at https://www.uspto.gov/sites/default/files/documents/PatentQualityConference%20Booklet.pdf
7 Tridico Ph.D., Anthony C., Marks, Jessica L.A., Sommers Ph.D., Erin M., "Designed to Streamline," January [2016] CIPA 24.
8 Enhanced Patent Quality Initiative (EPQI): Program Results at p.19, from Patent Quality Conference: Advancing Quality Across the IP Community, available at https://www.uspto.gov/sites/default/files/documents/PatentQualityConference%20Booklet.pdf
9 Enhanced Patent Quality Initiative (EPQI): Program Results at p.19, from Patent Quality Conference: Advancing Quality Across the IP Community, available at https://www.uspto.gov/sites/default/files/documents/PatentQualityConference%20Booklet.pdf
10 "Topics Announced for Case Studies Pilot," Director’s Forum Blog, posted 18 May 2016, available at https://www.uspto.gov/blog/director/entry/topics_announced_for_case_studies.
11 Enhanced Patent Quality Initiative (EPQI): Program Results at p.12, from Patent Quality Conference: Advancing Quality Across the IP Community, available at https://www.uspto.gov/sites/default/files/documents/PatentQualityConference%20Booklet.pdf
12 Compare "Topics Announced for Case Studies Pilot," Director’s Forum Blog, posted 18 May 2016, available at https://www.uspto.gov/blog/director/entry/topics_announced_for_case_studies ("we will post the study’s results on the Topic Submission for Case Studies Pilot webpage") with Topic Submission for Case Studies Pilot webpage, https://www.uspto.gov/patent/initiatives/topic-submission-case-studies-pilot-program.html (providing no results).
13 Enhanced Patent Quality Initiative (EPQI): Program Results at pp. 12-14, from Patent Quality Conference: Advancing Quality
Across the IP Community, available at https://www.uspto.gov/sites/default/files/documents/PatentQualityConference%20Booklet.pdf
14 Enhanced Patent Quality Initiative (EPQI): Program Results at p.10, from Patent Quality Conference: Advancing Quality Across the IP Community, available at https://www.uspto.gov/sites/default/files/documents/PatentQualityConference%20Booklet.pdf
15 Enhanced Patent Quality Initiative (EPQI): Program Results at p.15-16, from Patent Quality Conference: Advancing Quality Across the IP Community, available at https://www.uspto.gov/sites/default/files/documents/PatentQualityConference%20Booklet.pdf
16 Remarks by Director Michelle K. Lee at the Patent Quality Conference Keynote, 13 December 2015, available at https://www.uspto.gov/about-us/news-updates/remarks-director-michelle-k-lee-patent-quality-conference-keynote
17 Letter Re: Freedom of Information Act (FOIA) Request No. F-17-00099 from the USPTO Office of General Counsel, 10 March 2017, available at http://www.ipwatchdog.com/wp-content/uploads/2017/03/F-17-00099-Final-Response.pdf.
18 Remarks by Director Michelle K. Lee at the Patent Quality Conference Keynote, 13 December 2015, available at https://www.uspto.gov/about-us/news-updates/remarks-director-michelle-k-lee-patent-quality-conference-keynote
19 Stakeholder Training on Examination Practice and Procedure (STEPP), available at https://www.uspto.gov/patent/initiatives/stakeholder-training-examination-practice-and-procedure-stepp#step1
20 Patent Quality Chats, available at https://www.uspto.gov/patent/initiatives/patent-quality-chat
21 See, e.g., Tridico Ph.D., Anthony C., Marks, Jessica L.A., Sommers Ph.D., Erin M., "Designed to Streamline," January [2016] CIPA 24.
Originally printed in CIPA Journal in June 2017. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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