Patent Examination Priorities
Meurer, Michael J., William and Mary Law Review
TABLE OF CONTENTS INTRODUCTION I. A MODEL OF PATENT EXAMINATION ERRORS A. Introduction to the Model B. The Source of Errors C. The Social Cost of Examination Errors II. STRATEGIC PROSECUTION III. INCENTIVES AND MONITORING IV. EFFORT COST V. FUZZY BOUNDARIES VI. EXAMINATION REFORM CONCLUSION
The United States Patent and Trademark Office (PTO) faces a massive and growing backlog of patent applications. (1) The PTO cannot seem to increase its staffing fast enough to keep up with an explosion of applications, especially given problems with examiner morale and retention. (2)
At the same time, the PTO struggles to improve examination quality. (3) A decade or more of criticism pushed the agency to start experimenting with new examination methods. (4) One experiment, called the "second pair of eyes" review, required a second examiner to review an application that had been allowed by the original examiner. (5) The experiment was introduced in 2000 to improve the quality of certain kinds of business method patents. (6) A Federal Trade Commission report praised this program and endorsed its expansion. (7) The difficulty, of course, is that a second look at a patent application absorbs examiner time that could instead be used to address the application backlog.
Mark Lemley vividly commented on the resource constraint facing the PTO and its implications for patent quality. (8) He noted that patent examiners devote an average of eighteen hours to each patent they examine. (9) This compares unfavorably to what I expect of my students when they write research memos. Eighteen hours certainly is not much time, and thus, we should not be surprised if low quality patents sometimes issue.
Lemley defended "rational ignorance" at the PTO and argued against investing heavily in more examination hours as a method of improving patent quality. (10) Few patents are ever asserted, licensed, or litigated. (11) Thus, it would be bad policy to exert much effort to perfect the bulk of patents because they go unused. (12) Lemley contended the better choice is to continue the current practice of a relatively cursory review and save a more resource-intensive review for litigation, if and when litigation arises. (13)
The PTO has tentatively embraced two other paths out of this dilemma: shift some examination responsibilities to other parties, and stem the explosion of patent applications. In 2007 the agency initiated Community Patent Review, also known as the Peer to Patent program. (14) The goal of this experiment is to improve the quality of technical information available to patent examiners by enlisting volunteers to search for and share relevant "prior art" with examiners. (15) Prior art is patent jargon that refers to patents, publications and other information that can be used to limit or invalidate patent claims because, for example, they lack novelty or are obvious. (16) Commentators and patent officials are also considering outsourcing patent searches to for-profit companies and relying more heavily on searches and other examination activities by the Japanese and European Patent Offices. (17) All of these programs have potential to improve patent quality without consuming additional examiner time.
The PTO recently proposed a complementary set of regulatory changes that could have reduced the workload on examiners. (18) One proposed change would have limited the number of continuing applications that an inventor could submit. (19) There is evidence that one cause of the explosion of patent applications is a surge in the use of a string of related "continuing" applications that are linked through a shared disclosure contained in a single initial application. (20) This regulatory change was successfully challenged on the grounds that the reform was substantive and the PTO does not have substantive rule-making authority. (21) Other proposed changes would directly or indirectly limit the set of claims contained in a patent. …