The USPTO Patent Quality Checklist

31 March 2016 PharmaPatents Blog

In furtherance of its efforts to improve patent quality, the USPTO has issued a request for comments on new patent quality metrics being developed for implementation in 2017. As set forth in the March 25, 2016 Federal Register Notice, the new metrics will focus on the correctness and clarity of Office Actions, and will be implemented using a “Master Review Form” questionnaire. The USPTO has asked that written comments be sent to QualityMetrics2017@uspto.gov by May 27, 2016. 

The Patent Quality Master Review Form

The Master Review Form is a 25 page questionnaire with questions about the Examiner’s search and examination work product, including the type(s) of search done, the type(s) of rejections made, and “omitted rejections” that should have been made. For each type of rejection made, there are questions regarding correctness and clarity.

For example, the “correctness” section for obviousness rejections includes the following questions:

 

The “clarity” section for obviousness rejections includes the following questions:

 

Stakeholders may want to review the MRF and consider whether the “correctness” questions reflect the proper legal standard, and whether the “clarity” questions appear likely to identify unclear rejections.

You can see the current draft of the Master Review Form here.

Improving Patent Quality With The MRF

The USPTO explains that the MRF “is designed to provide standardized reviewing criteria for
quality reviews of finished work product.” As set forth in the Federal Register Notice:

Through application of standardized reviewing criteria, the USPTO can better leverage the results from the many levels of review conducted at the agency. The improvements to the data capture process will enable meaningful data analysis at a more granular level than previously possible, permitting valid inferences to be drawn at the workgroup and art unit levels. Through this process, the USPTO and the stakeholders in the patent system will
be able to gain a greater understanding of the state of patent prosecution and to work better together towards its improvement.

Improving The Patent Quality Checklist

The USPTO solicits feedback on the following points in particular:

  1. Is the USPTO moving in the right direction by choosing to focus on two core metrics: A work product metric representing correctness of actions, and a clarity metric that more thoroughly explores the sufficiency of the examiner’s reasoning in an Office action?
  2. Which of the proposed clarity and correctness review items in the [MRF] should be used as the key drivers of patent examination quality metrics?
  3. How can patent metrics best provide objective, rather than subjective, measurements of quality-related features in clarity and correctness reviews?

The USPTO also “welcomes comments on any and all areas of quality measurement,” including “suggestions for rephrased or additional quality metrics review items, especially clarity indicators.”

I wonder if the USPTO would let us “grade” the Office Actions we receive? 

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