USPTO PAC: Quality Examination Begins with Applicant's Search

According to the USPTO's Patent Public Advisory Committee Annual Report for November 30, 2007, patent "quality" is dependent upon five essential components:

1. providing a meaningful definition of quality;
2. accessing the best prior art;
3. accessing the best information available to the applicant;
4. assessing the appropriate level of examination resources necessary for highly complex applications; and
5. attracting and retaining the most qualified workforce.

With regard to the third item, where applicants can perhaps make the most immediate contribution to patent quality, the Report notes that

The Office’s need for the most complete set of relevant prior art cannot be overemphasized. In our collective experience, the applicant often has access to
the most relevant prior art and is in the best position to distinguish the claimed invention over this prior art.

Unfortunately, when the Office receives numerous highly technical patent applications with little or no relevant prior art, not only is proper examination difficult, but a serious question of applicant’s motivation is raised. As examples, applications have been submitted for inventions in the crowded art units of electronics and automotive technology, many of which did not cite even one piece of prior art. Since neither art area is new, one wonders how the applicant overlooked the relevant prior art.

In instances such as these, we would argue that examination should not go forward. At the other end of the information-disclosure continuum, the Office sometimes receives applications with prior art submissions so voluminous as to completely overwhelm any examiner having, on average, 21.2 hours for application review. Extreme cases of this "data dumping" include applications having tens of thousands of pages divided among a thousand references or more.

This "super-sized" application fails to provide any discussion of cited references relevance or priority to the application and as such, is a significant impediment to the examiner’s ability to timely analyze and consider the references, much less to craft a meaningful response. In such "super-sized" applications is it fair to the system and the public for any presumption be afforded to these "dumped" references? Too little or too much information both present serious challenges to examination quality, and both abuses are created solely by applicants. These abuses must be prevented if the system is to function properly for the benefit of the public.

. . . While the Committee is not recommending a blanket search requirement, it does note that applicants are already under an obligation of full disclosure, so that additional guidance from the USPTO in rules should assist in eliminating any ambiguity applicants might have with respect to "full disclosure" of information in their possession. The Committee leaves to the Office the conditions and timing of a special pre-examination search requirement. Finally, the Office should consider the ramifications of the Inequitable Conduct theory on any proposed rules.

. . . Candidly, a further cause of ever-increasing pendency is clearly applicants’ behavior itself. From the filing of the nth continuation application, to the presentation of an excessive number of claims, to the late filing of information disclosure statements (IDS), to the failure to file any illuminating information, or the inclusion of large numbers of less relevant references in such statements, applicants severely and directly impact an examiner’s ability to perform focused, timely and quality examinations. Such behavior must be brought under control in a manner that is fair to applicants.

The Patent Public Advisory Committee was created to advise Congress on the "policies, goals, performance, budget and user fees of the United States Patent and Trademark Office with respect to patents." The Committee’s duties include the preparation of an annual report submitted to the Secretary of Commerce, the President, and the Committees on the Judiciary of the Senate and the House of Representatives.