Giving Examiners the Proper Tools
As I said, critics assert that all too often the PTO issues “junk patents.” Everyone agrees that those patents which claim subject matter already in the prior art have been “anticipated” under section 102 of the U.S. patent law and should not have been issued.
When Jon Dudas was Director of the PTO from 2004 to 2009, he touted a declining rate of allowance of patent applications as evidence that patent quality was increasing. However, I believe that, by and large, the patent examination practices of that era merely created a bottleneck, which led to longer pendency but not much of an improvement in the ratio of valid patents to invalid ones.
To increase patent quality, I believe that the process of examining patent claims needs to be re-engineered. A proposed patent claim has to get past several legal hurdles before it is deemed legally allowable.
Section 103 of the U.S. patent law requires that the subject matter of the claim not have been “obvious” to a person having ordinary skill in the art. Until this fuzzy test is made crisper, either by statute or court interpretation, I think the judgment call of “obvious or nonobvious” will still need to be made by a person, not a machine.
Yet, isn’t it time that the society with the most powerful information technology in human history provide to those persons, i.e., examiners at the PTO, a tool that presents an organized report of the prior art that’s most pertinent to each element of each claim under examination? In effect, it would be an automated version of the Examination Support Document (“ESD”) that in 2007, the Dudas-led PTO had announced it would require many patent applicants to generate.
In the face of widespread criticism, the PTO thankfully withdrew that proposal. Criticism focused on the extreme burden on patent applicants being required to manually prepare such analyses as well as the legal risk of creating an Achilles heel by making an inadvertent error or omission. After all, to err is human.
Nobody said, however, that if a patent examiner were to be presented with such an analysis, it wouldn’t help him do his job. These days, a remnant of the proposal remains in the option to seek accelerated examination by submitting a similar report.
Back in 2007, I was impressed by a publicity piece issued by the intrepid folks operating the PatentCafe.com website. They announced a commercial service to automate the creation of an ESD.
At that time, I published an editorial in Biotechnology Law Report urging that the PTO provide such technology as an in-house tool for use by patent examiners. Doing so, rather than requiring an ESD from outside, would relieve the applicants and their attorneys of the burden and risk and yet lead to patents of improved quality.
I wrote: “This would be analogous to the deployment of the automatic telephone exchange after anticipated growth of the switchboard phone system couldn’t be supported without recruiting every woman in America to work as a telephone operator.”
Sadly, I am not aware that the PatentCafe ESD product as originally announced ever reached fruition. The impetus for it dried up when the PTO dropped the proposal to require certain patent applications to include an ESD. However, the project by PatentCafe seems to have morphed into what is now Pantros IP. In addition, the patent-searching tools offered by Lexis-Nexis now include an option to employ semantic analysis. So the requisite technology seems to be evolving as needed.
Now that IBM has demonstrated the ability of their Watson system to draw sophisticated conclusions from a vast repository of text, I submit that the time has come to enlist such technology in the service of the PTO toward more speedily generating a higher quality patent examination. With one stone, this should help kill the two birds of “junk patents” and the backlog of unexamined patents described above.