Share Your Patent Quality Pet Peeves

07 January 2016 PharmaPatents Blog

The USPTO is inviting stakeholders to suggest topics for patent quality case studies. As explained in the December 21, 2015 Federal Register Notice, “the USPTO performs case studies to investigate specific quality-related issues,” such as the quality of “first Office actions on the merits.” Based on the results of a case study, the USPTO may “take action to remediate quality issues or to formulate best practices to further enhance quality.” Now, “[t]he USPTO … seeks to leverage the experience of its stakeholders to expand the use of case studies to additional quality-related topics.”

Patent Quality Submissions

The USPTO is asking for detailed suggestions of topics “affecting the USPTO’s
ability to effectively issue high-quality patents.” The USPTO particularly solicits submissions that:

  • propose a specific correlation or trend for study
  • suggest a methodology for investigation
  • explain how the results of the case study could be used to improve patent quality

While a submission may include concrete examples, it “should not contain information sufficient to identify any particular application, any particular examiner, or any particular art unit.”

The Federal Register Notice includes an example submission and details on how to submit suggested topics, which are requested by February 12, 2016.

Patent Quality Pet Peeves

Several topics come to mind that might be suitable for a case study:

  • Restriction practice in U.S. national stage applications: How frequently do U.S. examiners find lack of unity when the PCT examiner did not? Is the lack of unity finding justified under PCT rules?
  • Examination of Patent Prosecution Highway applications: How frequently do U.S. examiners reject claims over prior art already considered by the previous patent office? Are the rejections justified under U.S. law?
  • After-final practice: How frequently do examiners refuse to enter amendments presented under AFCP 2.0? Are the refusals justified, e.g., would it require more than “a limited amount of further consideration or search” to determine that the amendments overcame the pending rejections?

What are your patent quality pet peeves?

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