BioPerspectives

Jul 21, 2008

Patent Reform is Not Necessary

  • Virtually all of the problems of the U.S. Patent system, including the high cost of obtaining a patent can be attributed to examiners issuing improper bogus rejections. While I know this is tue from my experience as a patent examiner, I performed a survey {using the PTO's Patent Application Information Retrieval (PAIR) system} of the 50 most recently issued patents classified in Class 435, Chemistry: Molecular Biology and Microbiology. In 76% of these patents, the examiner indicated in the first Office action that there was no allowable subject matter, i.e. none of the claims are patentable. Are the abilities of patent attorneys so low that over 75% of patent applications as filed do not contain at least one allowable claim? Or are the examiners writing bogus rejections? The answer is the latter. Currerntly a culture of rejection controls the operation of the PTO.

    What are some of the manifestations of the culture of rejection. One, is that most supervisors demand the new examiners (assistant examiners) reject all claims in their first Office action even if there is no prior art to support a rejection. One of the results of this policy is that new examiners spend many hours of unpaid overtime attepting to find art to support the rejections demanded of their supervisors. This is the real reason for the high turnover of new examiners. A second manifestation of the culture of rejection is that even when examiners become primary examiners, who are independent in making patentabiliy decisions, they continue to make improper rejections. I attribute this practice to two possible reasons. Some primary examiners, having written improper rejections for years, actually believe their bogus rejections are valid. More cynical primary examiners, having realized that even the most outrageous rejections will be tolerated by the PTO, also realize that a bogus rejection requires less time than proper examination.

    Why have patent attorneys been mute concerning this problem? To answer this question, one must look at the princple by which the PTO claims to operate. This principle is called compact prosecution. The examiner before preparing the Office action should perform a rigorous search of the prior art and when preparing the first Office action should address all the claims concerning patentability, i.e. the first Office actionis complete. The assumption is that most attorneys will in their response to the first Office action either abandon the application or amend the claims to place the application in condition for allowance. In other words, final rejections, going o the Board of Appeals, and particularly filing continuing applications should be rare. However, if 80% of applications, for example, were either abandoned or allowed after the patent attorney filed his/her response, the revenuse of patent law firms would drop precipitously

    What can applicant do immediately to counteract the current situation? Applicants must become more involved in the prosecution of their applications, e.g. reading the Office acions including the references. It does require extensive legal training to identify a rejection that is without merit. Two practical guidelines follow: 1. Never amend the claims if the rejection is improper. This will only allow the examiner to issue another non-final rejection. 2. The only appropriate response to a impropwer final rejection is go to the Board of Appeals. After final arguments/proposed amendments and filing continuing applications are a waste of money.


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