Request for Comments on Enhancement in the Quality of Patents, 65093-65100 [E9-29328]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 74, Number 235 (Wednesday, December 9, 2009)]
[Notices]
[Pages 65093-65100]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E9-29328]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2009-0054]


Request for Comments on Enhancement in the Quality of Patents

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) has in 
place procedures for measuring the quality of patent examination, 
including the decision to grant a patent based on an application and of 
other Office actions issued during the examination of the application. 
The USPTO in conjunction with the Patent Public Advisory Committee 
(PPAC) has undertaken a project related to overall patent quality. This 
notice is one element in that endeavor. As part of this effort to 
improve the quality of the overall patent examination and prosecution 
process, to reduce patent application pendency, and to ensure that 
granted patents are valid and provide clear notice, the USPTO would 
like to focus, inter alia, on improving the process for obtaining the 
best prior art, preparation of the initial application, and examination 
and prosecution of the application. The USPTO is seeking public comment 
directed to this focus with respect to methods that may be employed by 
applicants and the USPTO to enhance the quality of issued patents, to 
identify appropriate indicia of quality, and to establish metrics for 
the measurement of the indicia. This notice is not directed to patent 
law statutory change or substantive new rules. It is directed to the 
shared responsibility of the USPTO and the public for improving quality 
and reducing pendency within the

[[Page 65094]]

existing statutory and regulatory framework.
    Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before February 8, 2010. No public 
hearing will be held.

ADDRESSES: Written comments should be sent by electronic mail message 
over the Internet addressed to patent_quality_comments@uspto.gov. 
Comments may also be submitted by mail addressed to: Mail Stop 
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA 22313-1450, marked to the attention of Kenneth M. Schor and Pinchus 
M. Laufer. Although comments may be submitted by mail, the USPTO 
prefers to receive comments via the Internet.
    The written comments will be available for public inspection at the 
Office of the Commissioner for Patents, located in Madison East, Tenth 
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available 
via the USPTO Internet Web site (address: https://www.uspto.gov). 
Because comments will be made available for public inspection, 
information that is not desired to be made public, such as an address 
or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: By telephone: Pinchus M. Laufer, Legal 
Advisor, at (571) 272-7726, or Kenneth M. Schor, Senior Legal Advisor, 
at (571) 272-7710; by mail addressed to U.S. Patent and Trademark 
Office, Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 
1450, Alexandria, VA 22313-1450, marked to the attention of Pinchus M. 
Laufer and Kenneth M. Schor; or by electronic mail (e-mail) message 
over the Internet addressed to pinchus.laufer@uspto.gov or 
kenneth.schor@uspto.gov.

SUPPLEMENTARY INFORMATION: This notice is directed to the quality of 
the examination and prosecution of patent applications in the USPTO and 
the quality of patents resulting from that examination and prosecution.

I. Purpose of Notice

    The USPTO is responsible for the granting and issuing of patents. 
See 35 U.S.C. 2(a)(1). The USPTO examines patent applications to 
determine whether an applicant is entitled to a patent under the law, 
and issues a notice of allowance if, upon such examination, it appears 
that the applicant is entitled to a patent. See 35 U.S.C. 131 and 151. 
The USPTO examines applications for compliance with the applicable 
statutes and regulations, and for patentability of the invention as 
defined in the claims. See 37 CFR 1.104(a).
    The USPTO is seeking to improve the quality of the examination of 
patent applications and patents resulting from that examination.
    A quality patent is defined, for purposes of this notice, as a 
patent: (a) For which the record is clear that the application has 
received a thorough and complete examination, addressing all issues on 
the record, all examination having been done in a manner lending 
confidence to the public and patent owner that the resulting patent is 
most likely valid; (b) for which the protection granted is of proper 
scope; and (c) which provides sufficiently clear notice to the public 
as to what is protected by the claims. The present quality improvement 
effort has, as one goal, reduction of overall application pendency and 
is thus also directed towards identifying quality issues that give rise 
to process inefficiencies. The term ``quality patent'' as used herein 
does not include the economic value of the resulting patent, which is a 
result of market conditions and not the patent process itself. Rather, 
providing the strongest quality patent possible in the shortest time 
permits making the best use of a patent, given any set of marketing 
conditions.
    Improvement of the quality can reliably be achieved by a four step 
process:
    (1) Identification of the key aspects of the examination process 
that affect quality. These key aspects are the quality items--i.e., 
activities and actions carried out by the USPTO, by the applicant, or 
by both;
    (2) Identification of indicia of the presence (existence) of the 
desired quality items;
    (3) Establishment of a process that can meaningfully measure such 
indicia (establishing the metrics that can measure the indicia); and
    (4) Establishment/modification of policy and USPTO operations to 
optimize successful performance of the quality items (activities and 
actions carried out) to bring about desired improvements in patent 
quality and reductions in patent application pendency.
    The public is being requested to comment on items that affect 
patent quality, as well as addressing patent process inefficiencies 
with the aim of simultaneously improving patent quality while reducing 
overall application pendency. It is preferred that comments be provided 
in the manner set forth in the ``Public Comments Requested'' section of 
this notice (which immediately follows this section) and address the 
criteria for evaluating such comments set out below in Section III of 
this notice. In this regard, the USPTO is seeking comments from the 
public on improved methods of identifying indicia of existing quality 
items, and additional metrics for the measurement of indicia of 
existing quality items. Improvement to the monitoring of existing 
quality items should include methods of more reliable and efficient 
monitoring, as well as methods for making procedural changes based on 
the results of the monitoring. The USPTO desires to assess whether 
existing measures are reflective of the quality items they are designed 
to measure, how these measures can be improved upon, whether other 
measures could better assess the same quality items, and whether there 
are other aspects more indicative of quality that can be readily 
measured and used to improve quality and reduce application pendency.
    The public is also being requested to comment on suggested quality 
items of particular interest identified below in Section V of this 
notice by which the examination process can be meaningfully enhanced, 
or to suggest other key quality items; to identify appropriate indicia 
of the enhancement of quality provided by the quality items; and to 
establish metrics for the measurement of the indicia of enhancement. 
These quality items of particular interest, which will be discussed 
below, include (but are not limited to) identifying and analyzing the 
best prior art and evidence bearing on patentability, facilitating the 
presentation of the positions of the USPTO and the applicant to each 
other, coming to a definitive resolution of the issues that are 
presented which resolution is clearly stated, and presenting a clearly 
identified scope of the patent coverage, to provide the strongest 
quality patent possible in the shortest time.

II. Categories of Public Comments Requested

    For ease of organization and analysis, the areas for which the 
USPTO is requesting comment by way of this notice are divided into 
specific categories. The categories for which public comments are 
solicited are as follows:
    Category 1--Quality measures used: The USPTO is specifically 
requesting feedback on the quality measures that it is currently using 
(described below in Section IV.A), and new measures that it may adopt 
in the future. As to quality measures currently in place, the USPTO 
desires to assess whether these

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measures are reflective of the quality items they are designed to 
measure, whether these measures can be improved upon, whether other 
measures could better assess the same quality items, and whether there 
are other aspects more indicative of quality that can be readily 
measured.
    Additionally, areas in which the USPTO is particularly interested 
are those of: (1) Finding the best prior art; (2) obtaining a 
comprehensive initial application; (3) providing a comprehensive first 
Office action on the merits including a clear explanation of all issues 
raised; (4) obtaining a comprehensive and clear response to Office 
actions on the merits; and (5) proper use of interviews. These are 
discussed in Section V of this notice. The public is invited to comment 
on those areas, including suggesting modifications of the USPTO's 
suggestions. In addition, the public is invited to suggest other areas 
of the process which are believed to have a significant bearing on 
quality. Any such suggestions should be accompanied by an explanation 
of the basis for the belief that the suggested area(s)/modification(s) 
has/have a significant bearing on quality.
    The USPTO is requesting that such feedback be provided in terms of 
the following information:
    A. Identification of the key items, i.e., the activities and 
actions that are carried out by the USPTO, by the applicant, or by 
both, that bear on quality. What is the nature of activity, action, or 
conduct that increases quality, and why is it believed to do so?
    B. Identification of indicia of the presence of the desired quality 
items. How do the proposed indicia show that the desired activities and 
actions were indeed carried out, and show the quality or effectiveness 
of that activity performed by the USPTO and/or the applicant?
    C. What metric(s) should the USPTO use to measure each indicium, 
and what is the nexus between the measured indicium and the metric(s) 
used (why is the existence of the indicium proved by the metric)? Based 
on that nexus, why is the proposed metric believed to provide a 
practical combination of reliability and efficiency?
    Category 2--Stages of Monitoring: With a view toward reducing 
patent pendency, the USPTO is considering the monitoring of quality at 
each step, or at as many steps, in the patent application, prosecution, 
and examination processes as is feasible, and monitoring of quality as 
close in time to when the step whose quality is being measured is 
performed as is feasible. The USPTO is specifically considering 
monitoring quality at each of the following stages of the patent 
application and examination process: (1) When the application is filed 
in the USPTO; (2) when the initial search for the application has been 
completed; (3) when the first Office action for the application has 
been completed; (4) when an interview for the application has been 
conducted; (5) when a reply to the first or any subsequent non-final 
Office action has been filed; (6) when an Office action (non-final or 
final) or notice of allowance in response to a reply to a non-final 
Office action has been completed; (7) when an after-final submission 
has been filed; and (8) when an appeal brief or other appeal-related 
paper has been filed.
    The USPTO is requesting comments on the choice of these stages, and 
the practicality of measuring quality at each one of these stages. It 
is requested that the public point out at what step or steps in the 
patent application and examination process the USPTO should measure the 
quality obtained by the identified activity, action, or conduct that 
increases quality. While measuring quality at each stage may yield much 
information, it seems credible that increasing quality of the 
application in the early stages would be most effective in reducing 
pendency, and the USPTO is seeking comment on this hypothesis.
    The public is also invited to provide information on how quality is 
affected by action taken in the above-identified eight stages, or in 
other stages in the patent application process and to identify the 
nature of activity, action, or conduct that increases quality in that 
stage--such information would be included as ``other areas of the 
process which are believed to have a significant bearing on quality'' 
in the comments responding to Category (1) of this section. Also 
included would be how the USPTO should measure the quality obtained at 
each such step, and the nexus between the targeted quality aspect and 
the measured indicia of the activity, action, or conduct that increases 
quality in that stage.
    Feedback from the USPTO: In connection with this category, the 
USPTO is also requesting input on the timing of the USPTO's assessment 
and reporting of various measures of quality in relation to the stages 
of monitoring. For example, should the USPTO await final disposition of 
the application before reporting on the quality measure obtained for 
that application? Or, would there be a practical, cost-effective way 
for the USPTO to report quality measures, during certain identified 
stages in the proceeding to be identified in the comments (with an 
explanation of why it would be practical and cost-effective)?
    Category 3--Pendency: The USPTO is also requesting comments on 
whether the quality of the prosecution and examination of the 
application and quality of the resultant patent can be improved at the 
same time as reducing the overall pendency of an application. This 
category also includes input on how the use of continuing applications 
(continuations, voluntary divisional applications) has affected overall 
pendency and quality. For example, where specific claims are allowed in 
a given application, does the filing of a continuation application to 
address the broader rejected claims add to or detract from the quality 
of prosecution and examination of the applications and the quality of 
the resultant patents?
    Category 4--Pilot Programs: The USPTO is interested in receiving 
feedback regarding the effect on patent quality and examination quality 
resulting from various pilot programs (e.g., Peer-to-Patent, Pre-Appeal 
Brief Conference Pilot, First Action Interview Pilot, Continuing 
Education for Practitioners (CEP) Pilot) either expired or currently in 
effect. This quality effort does not include at this time providing 
selection options for different examination procedures such as deferred 
examination. Input as to what metrics could be used to measure 
enhancements of quality due to any of these pilot programs is also 
solicited.
    Category 5--Customer Surveys Regarding Quality: The USPTO is 
requesting feedback on past USPTO surveys of the patent community and 
proposed modifications for future surveys. In 2006 the USPTO launched 
the Customer Panel Quality Survey (CPQS). The survey is designed to 
capture input from the USPTO's frequent customers regarding key 
examination quality issues and to provide customers with a mechanism to 
suggest critical training needs and areas on which the USPTO should 
focus in terms of quality improvement. The survey is also designed to 
assist the USPTO in monitoring changes in patent examination quality 
between survey periods.
    The USPTO partners with an independent research firm to administer 
the CPQS. The survey has been administered in regular survey periods or 
``waves'' on a roughly quarterly basis from fiscal year 2006 through 
fiscal year 2009. The target population for the survey is a panel of 
patent customers who have had the most interaction with the USPTO over 
the past year. Top filers are defined as law firms, organizations, or 
individual inventors who have

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submitted six or more patent applications in the previous year. The 
survey uses a rotating panel survey design; customers are asked to 
participate in two consecutive survey periods in order to provide valid 
trend comparisons between survey periods. On average, there have been 
about 1,100 respondents per survey period. Survey results are analyzed 
on a quarterly basis to assist USPTO in developing data-driven 
improvement strategies on topics related to examination quality.
    The USPTO is interested in comments regarding survey composition 
and methodology, such as questions, format, and population. Comments as 
to how survey results can be more effectively used to enhance quality 
are also solicited.
    Category 6--Tools for Achieving Objectives: The USPTO is requesting 
identification of existing tools which are, or can be made, available 
to users and the USPTO to enhance the quality of the USPTO's processes. 
Such would include, for example, software tools that will provide 
meaningful monitoring, search tools, claim analysis tools, and case law 
identification tools. In addition, the USPTO is interested in data 
mining tools to help monitor its quality items and other useful 
statistics.
    Category 7--Incentives: The USPTO is requesting comments on means 
to incentivize applicants and USPTO personnel to adopt procedures and 
practices that support the achievement of patent quality. It is 
recognized that any additional effort to increase the quality of the 
product has an associated cost.
    The criteria used to evaluate comments and proposals are set out 
below in section III which immediately follows. Comments should 
consider these criteria and address them as best possible to enhance 
the value and impact of any proposals and comments.

III. Criteria for Evaluating Comments and Proposals

    Public input which is received will be evaluated in terms of:
    (a) The feasibility of implementation of each proposed enhancement;
    (b) The relative value of the proposed enhancement--
    1. Will it affect a statistically significant number of cases, as 
compared to other suggestions?
    2. Will there be any negative consequences of proposed enhancement 
to the USPTO and practitioners that could outweigh the benefits of it 
implementation?
    3. Will cost/expenditure in USPTO resources outweigh the benefits 
of it implementation?
    (c) The ability to provide clear indicia of successful quality 
enhancement, and metrics that will meaningfully measure the results of 
such enhancement--
    1. Are there associated metrics that accurately reflect the 
indicia?
    2. Are there indicators associated with the metric that are capable 
of accurately reflecting meaningful progress?
    3. Do the indicia and metrics reflect a behavior that can, in 
response to its being tracked, affect a statistically significant 
number of cases or apply only to certain technologies?
    (d) Practicality of implementing a process to obtain data 
reflecting the indicia, including--
    1. Will cost/expenditure in USPTO resources be too much or how 
should it otherwise be paid for?
    2. Will the tracking of the metric require major overhaul of USPTO 
internal process in order to gather the appropriate data?
    3. Will there be any negative consequences of using the indicia or 
its metrics to the USPTO and practitioners (e.g., chilling effect on 
other actions taken) that could outweigh the benefits of it use?

IV. Background for the Requested Information

    A. Quality Monitoring: The Office of Patent Quality Assurance 
(OPQA) conducts in-depth reviews of examiner work products, evaluates 
findings, and assists the Patent Examining Corps in the development and 
implementation of quality improvement initiatives. The OPQA reviews are 
currently used to generate the official USPTO examination quality 
metrics.
    Prior to fiscal year 2005, the USPTO official quality metric was 
directed to only the final output of the examination process--an 
allowed application. Since fiscal 2005, OPQA's quality review focus was 
expanded to encompass all substantive actions within the USPTO's 
control in the patent process, namely, the quality of the decision to 
allow an application and the quality of the Office actions issued 
during the course of examination of an application.
    From fiscal years 2005 through 2009, the USPTO employed two 
official metrics of examination quality: (1) The Allowance Compliance 
Rate; and (2) the In-Process Review (IPR) Compliance Rate. In fiscal 
year 2010 the USPTO has modified the official metrics to report (1) 
Final Action/Allowance Compliance Rate; and (2) IPR Compliance Rate for 
non-final Office actions.
    (1) Allowance Compliance Review: Allowance Compliance is determined 
by performing a review of a randomly selected sample of allowed 
applications drawn from all Technology Centers. The reviews are 
conducted on applications after a notice of allowance has been mailed 
in an application but prior to patent grant. The focus of this review 
is on the examiner's decision to allow the application. If any allowed 
claim is found to be unpatentable for any reason provided in the patent 
laws, the allowance of the application is considered to be in error. In 
addition to the assessment of the patentability determination for the 
claims, the record is reviewed for completeness and clarity and to 
ensure compliance with procedural and formal matters. The review also 
evaluates the quality of the examiner's search.
    (2) In-Process Review: IPR Compliance is determined by performing a 
review of a randomly selected sample of applications containing Office 
actions issued prior to allowance or appeal of an application, drawn 
from all Technology Centers. The focus of this review is on indicators 
of quality that were determined on the basis of feedback from patent 
practitioners obtained prior to the development of the IPR program and 
includes, but is not limited to, determining: (1) Whether the 
rejections made in the Office action are proper; (2) whether the Office 
action fails to include rejections that would have been appropriate; 
(3) whether the examiner has responded to all matters of substance in 
the applicant's reply; (4) whether the examiner has clearly set forth 
his or her reasoning; (5) the propriety of the finality of a final 
Office action (where applicable); (6) the propriety of any restriction 
requirement; (7) the quality of the search; and (8) the propriety of 
the examiner's handling of formal matters. If there is a clearly 
erroneous action on the part of the examiner that would cause the 
applicant or USPTO unnecessary rework or expense in the examination 
process (such as a clearly erroneous rejection of a claim, failing to 
include an appropriate rejection where institution of the rejection 
would necessitate an additional Office action, failure to substantively 
treat applicant's reply, or improperly making an action final), the 
action is considered to be an error.
    B. Quality Reporting: Fiscal years 2005-2009: As pointed out above, 
from fiscal years 2005 through 2009, the two official metrics of 
examination quality used by the USPTO were the Allowance Compliance 
Rate and the In-Process Review (IPR) Compliance Rate.
    The IPR Compliance Rate encompassed both non-final and final Office 
actions. The IPR Compliance Rate was determined on the basis of a 
review

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of a randomly selected sample of both non-final and final Office 
actions; in FY 2009, the sample size was 3,199, with approximately two 
non-final actions reviewed for every final action reviewed. The IPR 
Compliance Rate was defined as the percentage of reviewed applications 
in which no clearly erroneous action was found.
    The Allowance Compliance Rate was a stand-alone review, limited to 
allowed applications. The Allowance Compliance Rate was determined on 
the basis of a review of a randomly selected sample of allowed 
applications. In FY 2009, the sample size was 4,588; thus, 
approximately three allowances were reviewed for every IPR Compliance 
Rate action reviewed. The Allowance Compliance Rate was defined as the 
percentage of applications undergoing Allowance Compliance Review whose 
allowance was not considered to be in error.
    Fiscal year 2010: For fiscal year 2010, the In-Process Review 
compliance rate has been redefined to include only non-final Office 
actions, and the metric is designated as the ``Non-Final In-Process 
Compliance Rate.'' In FY 2010 approximately three out of five (58.4%) 
of all reviews (finals, allowances, and non-finals) will be of non-
final actions. Also, final Office actions are now grouped with 
allowances, to provide a new metric--the ``Final Action/Allowance 
Compliance Rate.'' In FY 2010, an approximately equal number of 
allowances (19.4%) and final rejections (22.3%) will be reviewed.
    Note that, the new sampling ratios and groupings shift the emphasis 
of the USPTO quality review process towards the earlier stages of 
prosecution by emphasizing non-final Office actions. It is believed 
that an emphasis on the quality of initial actions can do much toward 
reducing overall application pendency, by identifying weaknesses in the 
examination process that may have escaped scrutiny by the prior 
emphasis on allowance compliance.
    The Final Rejection/Allowance Compliance Rate is determined on the 
basis of a review of a randomly selected sample (2,793 for FY 2010) of 
allowed applications and finally rejected applications. An allowed 
application is considered to be compliant if it is free from error as 
defined by the criteria set forth above in Section IV.A(1) titled 
``Allowance Compliance Review.'' A final Office action is considered to 
be compliant if it is free from error as defined by the criteria set 
forth above in Section IV.A(2) titled ``In-Process Review.'' The Final 
Action/Allowance Compliance Rate is defined as the percentage of 
applications undergoing Final Action/Allowance Compliance Review for 
which no deficiency is found with respect to the examiners' final 
determination concerning the patentability of the claims.
    The Non-Final In-Process Compliance Rate is determined on the basis 
of a review of a randomly selected sample of non-final Office actions 
(3,914 for FY 2010). An Office action is considered to be compliant if 
it is free from error as defined by the criteria set forth above in 
Section IV.A(2) titled ``In-Process Review.'' The Non-Final In-Process 
Compliance Rate is the percentage of non-final actions reviewed in 
which no examination deficiency is found.
    Information obtained through the various reviews will be analyzed 
to identify trends in examination quality, areas where improvement is 
needed, and strategies for gaining improvements.
    C. Quality Index Ranking (QIR): In fiscal year 2010, the USPTO will 
be using internal statistical measures to identify outliers and other 
anomalies in processing and examination.
    QIR involves obtaining data from the PALM internal USPTO tracking 
system on items such as multiple non-final actions, restrictions (after 
first action, or multiple, sequential or late in prosecution), 
reopening of prosecution after the filing of an appeal brief, reopening 
of prosecution after a final rejection, first action allowances, 
multiple requests for continued examination (RCE) made in a single 
application, and allowances after RCE filing without any substantive 
amendment. The data are analyzed to identify outlier populations--i.e., 
individuals or populations for which there is a frequency of any of 
these data points that is significantly different from the norm for a 
particular cohort. Such outliers may signal the presence of quality or 
procedural issues that need to be addressed (or conversely, in some 
instances they may indicate superior examination practices, from which 
best practices could be identified and shared).
    A quality initiative for fiscal year 2010 is for the USPTO to 
perform reviews of Office actions for the purpose of providing 
individual examiner feedback and training. These reviews will be in 
addition to the statistical reviews performed by OPQA and those 
normally performed within the Technology Centers; these additional 
reviews will be conducted by a combination of OPQA Review Quality 
Assurance Specialists and Technology Center managers. Applications will 
be selected for review on the basis of statistical analysis of 
prosecution parameters identified as being probable indicators of 
procedural or examination practices that are in need of improvement, 
such as those that are enumerated in the paragraph above. Such review 
findings will be used for the purpose of providing one-on-one examiner 
feedback, and for developing broader training initiatives where such 
needs are identified. Follow-up reviews and/or analysis will be 
conducted subsequent to feedback and training, in order to assess 
effectiveness of the feedback loop. At the time of drafting of this 
Request, the sample size for these reviews has not been finalized.
    D. Looking to the Future in Quality Monitoring: The USPTO has, in 
the past, reviewed quality studies obtained from the public and those 
generated internally, and it has included the input from such studies 
in its effort to continually improve the quality examination process. 
Recently, however, the USPTO has received feedback that its current 
quality measures do not accurately measure the quality of patents 
issued by the USPTO or the quality of the USPTO's examination process. 
In addition, the USPTO has received feedback that some measures it has 
taken to improve the quality of the patents it issues have resulted in 
prolonging the prosecution of applications. The USPTO is continually 
seeking ways to improve the quality of its examination of patents, to 
improve the means used to measure that quality, and to reduce 
application pendency. Thus, the USPTO is seeking public input (as above 
requested in Section II of this notice) on the best ways to improve 
quality, measure that improvement, without extending the examination/
prosecution process, and in fact to shorten the process. It is 
preferred that the improvements proposed should be directed to (a) ways 
of identifying and analyzing the best prior art and evidence bearing on 
patentability and presenting that information ``up front,'' (b) a clear 
presentation of the positions of the USPTO and the applicant to each 
other at each stage of the process, and (c) coming to and clearly 
stating a definitive resolution of the issues that are presented, and 
clearly identifying the scope of the patent coverage. Comments that 
focus on specific issues which apply to certain technologies are also 
solicited.

V. Some Specific Areas of Particular USPTO Interest

    Enhancement of the process and its quality, as well as monitoring 
of same, are best accomplished when process changes are a product of 
input from the USPTO and from the public. In that

[[Page 65098]]

context, and in the interest of making this request for comments more 
focused for subsequent action, five specific areas in which the USPTO 
is particularly interested in receiving comments will now be discussed. 
The completeness and quality of action taken in these areas prepares 
the application for an efficient and reliable conclusion in its 
evaluation, and furthers the goal of providing valid patents.
    This notice makes no representation that these five specific areas 
are the only areas where quality can be improved. The USPTO welcomes 
any further suggestions to address the details of improving quality in 
the five areas specifically identified below, as well as suggestions to 
address any other specific areas of concern which may be included in 
this or follow-up quality improvement efforts.
    1. Prior Art: Recognizing the essential need for having the best 
prior art before a patent examiner during the initial examination of a 
patent application to the quality of the examiner's decision on the 
patentability of the invention as defined in the claims and the 
ultimate validity of a granted patent, the USPTO provides specific 
instructions to examiners for identifying the most pertinent prior art 
for an application. These instructions are designed to furnish patent 
examiners with sufficient information to make appropriate novelty and 
nonobviousness determinations.
    Examiners are instructed to conduct ``a thorough investigation of 
the available prior art relating to the subject matter of the claimed 
invention.'' See 37 CFR 1.104(a). More specifically, the Manual of 
Patent Examining Procedure (MPEP) instructs examiners that prior art 
searches are to include not only the field in which the invention is 
classified, but also analogous arts. See MPEP Sec.  904.01(c) (8th ed. 
2001) (Rev. 7, July 2008).
    To assist examiners in obtaining the best prior art, the USPTO has 
invested a substantial amount of resources in the search and retrieval 
of a wide variety of prior art documents. Patent examiners can readily 
search classified files, microfilm, and CD-ROMs, comprising United 
States patents, foreign patent documents, Patent Cooperation Treaty 
(PCT) publications, as well as a large selection of non-patent 
literature, including technical journals, books, magazines, 
encyclopedias, product catalogues, and industry newsletters. In 
addition, patent examiners have access to in-house and commercial on-
line databases providing convenient access, from their desktop, to 
millions of United States and foreign patent and non-patent literature 
documents. Furthermore, all patent examiners have access to the 
Internet to search relevant Web sites for prior art.
    The most rapidly changing technologies, for example, in the 
telecommunications and the computer-related arts, present challenges in 
searching and identifying the most relevant prior art. This is because 
often the best prior art with respect to these emerging technologies is 
available as non-patent literature months to years before it is 
available in the form of United States or foreign patents. Accordingly, 
searching the non-patent literature in rapidly changing technologies is 
vital to the quality of the patentability determination. To ensure 
complete coverage, the USPTO is working on assembling a larger, more 
complete non-patent literature prior art collection in emerging 
technologies and is working on providing patent examiners with better 
access to non-patent literature in new areas of technology, as new 
areas continue to emerge.
    In addition to the prior art uncovered during the search conducted 
by the examiner, applicants have a duty to submit all information known 
to them to be material to patentability of the claims. See 37 CFR 1.56. 
Applicants are also encouraged to review certain types of information, 
e.g., prior art cited in search reports of a foreign patent office in a 
counterpart application, to ensure that material information is 
disclosed to the USPTO. See 37 CFR 1.56(a)(1) and (a)(2). It is also 
helpful for applicants to perform a search on the disclosed invention 
prior to drafting claims for presentation for examination. This 
applicant contribution is important to high quality patent examination 
because inventors often are in the best position to be aware of the 
state of the art and are in possession of, or have access to, the most 
pertinent prior art. The quality of patent examination increases when 
applicants assist the examiners in identifying prior art information, 
particularly non-patent literature, which is material to patentability. 
This is especially so when the information is identified to the USPTO 
as early as possible in the examination process, so that issues can be 
clarified, defined and resolved at an early stage in the examination 
process.
    Given the above, comments are being solicited to improve upon the 
performance of the USPTO in identifying relevant prior art. In this 
regard, the USPTO would like to address the difficulties involved in 
locating the best prior art, and any perception that the best art is 
not being found with particularity regarding gaps in certain technology 
areas. Comments are also being solicited regarding search techniques 
and procedures which can improve the success of identifying relevant 
prior art, as well as how the parties' efforts in bringing this about 
can be better achieved and measured. Comments are further being 
solicited on how the success of identifying relevant prior art can be 
measured, as well as how the parties' efforts in bringing this about 
can be measured.
    2. Comprehensive Initial Application: The patent acquisition 
process is best streamlined when the applicant presents a comprehensive 
initial application. It is suggested that such an application could 
include the following elements:
    Applicant's representative practitioner would present a reasonable 
number of claims upon filing that cover the broadest and narrowest 
claim coverage the application clearly supports under 35 U.S.C. 112 and 
the applicant is willing to accept. The claims would be drafted taking 
into consideration the relevant prior art and evidence available, and 
the closest prior art (e.g., 5-10 most relevant references) and 
evidence would be presented to the USPTO as early as possible.
    Applicant's representative practitioner would present a clear and 
complete specification that provides clear written description and 
support that provides antecedent basis for all claim language. The 
specification would be readily understandable, with terms or phrases 
that are not clearly defined in the state of the art having special 
definitions so that the applicant, examiner, and the public share a 
common understanding of the scope of the specification and claims.
    Comments are being solicited as to the various aspects of the 
initial application. In addition, input is sought as to what guidelines 
the USPTO can disseminate, to best assist applicants in preparing 
applications in a manner that the USPTO can most efficiently and 
completely examine the applications; and how the completeness of filed 
applications can be measured. In particular, the USPTO is interested in 
suggestions as to what features of an initial filing can be used as 
indicia of the quality and completeness of the submitted application 
and how to measure the effect these indicia have on pendency of the 
application and quality of the final result.
    3. Comprehensive First Office Action on Merits, With Clear 
Explanation of All Issues: After reviewing the entire specification in 
detail, the examiner construes the claims and searches the disclosed 
invention defined by the

[[Page 65099]]

claims as construed. The examiner then reviews the entire application 
for compliance with all the relevant statutory and regulatory 
requirements, and communicates his/her findings to the applicant in an 
Office action on the merits. The examiner provides a clear explanation 
of all issues in the Office action. See 37 CFR 1.104(a).
    A comprehensive initial Office action (which is geared toward 
eliciting a comprehensive response from applicant) is important to 
streamline the effective resolution of issues between applicant and 
examiner. It is suggested that initial Office action could include the 
following. When warranted, the examiner may explain in the Office 
action the examiner's claim construction as compared with the scope of 
the disclosed invention, and how the prior art is being applied to the 
claims. In those instances, the examiner would explain how the prior 
art is applied against the claims given their broadest reasonable claim 
construction, as that construction was explained by the examiner. The 
examiner would also apply the prior art to the claims, as they may be 
interpreted in light of the specification. The examiner would point out 
any issues of claim clarity and support for the claims (as well as any 
other statutory or formality deficiency in the claims and disclosure as 
a whole), and how to address the issues, as appropriate.
    It is contemplated that examiners be explicitly instructed not to 
always rely solely on form paragraphs, and to modify any form paragraph 
used, when such is appropriate to a given situation. In general, when 
using a form paragraph, the examiner should be familiar with any 
statutory, regulatory, and case law cited in the form paragraph and 
discuss it in detail as it applies to the specific facts of the case.
    It is also contemplated that the Office action would be structured 
to not only clearly define the issues that are raised, but also to 
explain any subtleties that an applicant might not recognize. Likewise, 
the action would not only respond to all points made by applicant, but 
also would address applicant's assumed logic on which those points were 
based. Finally, the action would provide suggestions to resolve any 
issues, whether clearly raised or not, that the examiner believes can 
and should be resolved, to facilitate the process and resolve issues at 
the earliest point possible.
    Comments are being solicited as to the aspects of the initial 
Office action that will enhance quality, how one can measure the 
particular suggestions, whether any aspect of the suggestions should be 
mandatory or be otherwise procedurally handled, and further addresses 
the cost impact and how and whether any resultant additional costs to 
the system of implementing the suggestions can be dealt with or whether 
the costs exceed the perceived benefits. Comments are also solicited as 
to how examiners can best communicate the information discussed above, 
to best assist applicants in responding to Office actions; and how the 
success of that communication can be measured.
    4. Comprehensive and Clear Response to Office Action on the Merits: 
Following the Office action, the process is most efficiently advanced 
when the applicant's response presents all the information at 
applicant's disposal bearing on the patentability of the claims and 
desired issuance of a patent. It is desirable that the response place 
the application in a position where applicant has addressed all the 
examiner's points as well as all of applicant's needs, while at the 
same time preparing the application for final resolution of the issues. 
It is suggested that the response include the following elements.
    In responding to the Office action, applicant would address the 
examiner's explanation of claim construction to the extent it is given, 
including explaining any disagreement between the USPTO and applicant 
as to the claim construction. After reading the USPTO's position in the 
Office action, applicant would provide all needed independent and 
dependent claims to cover all aspects of coverage desired--prior to the 
need for a final Office action; this set of claims should include 
claims that would result in the coverage desired should the examiner's 
claim construction be adopted (i.e., define patentability over the 
examiner's claim construction and the examiner's overall position). 
Applicant would not assume that arguments directed to independent 
claims will be persuasive, but rather would also argue all meaningful 
dependent claims individually and explicitly point out which 
limitations define patentability, and which do not. Also, all evidence 
to address the examiner's position would be presented as early as 
possible and before final Office action; it should not to be assumed 
that if applicant's arguments are not accepted, the evidence can later 
be presented.
    Comments are being solicited as to the various aspects of the above 
suggested response. In addition, comments are being sought as to what 
guidelines the USPTO can disseminate to best assist applicants in 
preparing responses in a manner that the USPTO can most efficiently and 
completely resolve issues, and bring the examination of the application 
to a rapid, yet comprehensive, conclusion; and how the success of this 
can be measured.
    5. Proper Use of Interviews: It is highly desirable that the 
examiner encourages, and is prepared to conduct, an interview whenever 
it will facilitate resolving ambiguities and issues, or will otherwise 
allow for a more effective examination.
    As to applicant's role, it is suggested that (to obtain maximum 
benefit from the interview) whenever the practitioner requires 
clarification of a USPTO position, the practitioner have an interview 
on the application prior to submitting the response and after comments 
on Office actions have been received from the client. Before an 
interview, the practitioner would provide the examiner with an agenda 
for the interview, including copies of any proposed amendments, 
exhibits, or other information that would be beneficial to review in 
advance.
    After the interview, both the examiner and applicant would 
independently set forth in detail what took place at the interview (as 
required by current procedure). Prior art, and other information/
evidence discussed would be specifically identified and the points 
regarding the claim limitations and/or the disclosure and teachings of 
the references would be made part of the record. The response to the 
outstanding Office action would make reference to the points noted in 
the practitioner's interview summary. Likewise, the response would also 
address the examiner's interview summary, if it is already of record; 
if there is conflict with attorney's summary, that conflict can be 
explicitly noted and clarified as needed.
    Comments are being solicited on how to improve upon interview 
practice, to resolve issues at the interview, and to make the full 
substance of the interview of record; and how the effectiveness of the 
interview, as well as the completeness of its recorded summary, can be 
measured.

VI. Guidelines for Written Comments

    Written comments should include the following information: (1) The 
name and affiliation of the individual responding; and (2) an 
indication of whether comments offered represent views of the 
respondent's organization or are the respondent's personal views.
    As discussed previously, the USPTO prefers to receive comments via 
the Internet. Information provided in response to this request for 
comments will be made part of a public record and

[[Page 65100]]

may be available via the Internet. In view of this, parties should not 
submit information that they do not wish to be publicly disclosed or 
made electronically accessible. Parties who would like to rely on 
confidential information to illustrate a point are requested to 
summarize or otherwise submit the information in a way that will permit 
its public disclosure.

    Dated: November 30, 2009.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E9-29328 Filed 12-8-09; 8:45 am]
BILLING CODE 3510-16-P