By Benjamin R. Imhoff and Thomas R. Knight
In 2015, the U.S. Patent and Trademark Office (the “USPTO”) unveiled the Enhanced Patent Quality Initiative, a series of programs to improve the quality of patents and the processes for obtaining them. With some of these programs and initiatives now being completed, the USPTO has started reporting on the results of these efforts. High-quality patents are essential for certainty and clarity of rights, which fuel innovation and reduce the incidence of avoidable litigation. Likewise, a high-quality process for handling patent applications ensures predictability and uniformity to support effective management of intellectual property assets.
The Enhanced Patent Quality Initiative (EPQI) is divided into three areas of focus, referred to as the patent quality pillars. To begin, Pillar 1 seeks to promote the best possible work products and services generated by the USPTO throughout the patent process. Pillar 2 seeks to ensure accurate and effective measurement of the quality of patents, as well as measurement of targeted issues with the patent process. Finally, Pillar 3 seeks to improve the customer experience throughout the pendency of the patent application from filing to issuance. Together, these pillars serve to improve the quality and consistency of granted patents and the application process as a whole.
Pillar 1: Excellence in Work Products
One consistent theme of the EPQI program is the focus on obtaining feedback for continuous improvement of existing and future programs. With this in mind, the USPTO hosted a series of traveling panel discussions with industry experts in five cities across the United States. The five stops included Milwaukee, Wisconsin, where Andrus Attorney Christopher Liro was among the three industry panelists leading the discussion. While these panel discussions have ended, the USPTO has instituted a program to continue receiving such feedback by allowing stakeholders to submit topics for further case analysis. Through this program, industry experts can maintain a voice at the USPTO, driving furthering improvements beyond the present EQPI programs.
Another Pillar 1 program is the Automated Pre-Examination Search Pilot. This test program is exploring the viability of providing an automated prior art search upon filing an application, before it is formally examined. This protocol could be similar to those employed in many European countries and the International Patent System. In this regard, the initial automated review of applications becomes more uniform and less prone to subjectivity. The USPTO’s current fees are already divided into separate categories for filing, searching, and examination. Therefore, providing an applicant with these automated prior art search results may offer strategic insight into the patentability of the invention before additional fees for formal examination are incurred.
Pillar 2: Excellence in Measuring Patent Quality
Other programs within the EQPI target the improvement of the application prosecution process. One program focuses on ensuring that examiners have all of the latest information at the time of examination, including that of related applications and related granted patents undergoing post grant proceedings. Two others involve training and establishing procedures for improving the clarity of the record during prosecution. Among other benefits, this should improve detectability and confidence for businesses or individuals seeking freedom to operate, non-infringement, or invalidity opinions in view of existing patents.
Additionally, the USPTO has developed new quality metrics and measurement systems. To complement these new metrics, another program developed a single form to collect data for all phases of application prosecution history. This single form replaced the multiple forms previously employed, simplifying and harmonizing the review process for internal Quality Assurance personnel. These new metrics, fueled by more uniform data, should improve the quality and consistency of patents and the evaluation of existing and future improvement programs.
Pillar 3: Excellence in Customer Service
The Design Patent Publication Quality program was one of the first EPQI programs completed. This program changed processing and handling of drawing images by the USPTO, providing higher-quality images in published Design Patents. Since the scope of a Design Patent is based only on the ornamental features shown in the provided images, high-quality reproductions are essential for clarity of the rights therein. The USPTO hopes to extend these image processing capabilities to Utility Patent publications and issued patents.
The Post-Prosecution Pilot (P3) program is an optional mechanism for applicants seeking to continue prosecuting a patent application that has received a “final” rejection from the USPTO. This new program combines the most effective features of the After Final Consideration Pilot (AFCP 2.0) Program and the Pre-Appeal Brief Conference Pilot Program, which also continue to exist.
After completing a P3 application, the USPTO schedules a P3 conference with the applicant (or intellectual property counsel). During this conference, the applicant presents up to 20 minutes of oral arguments for overcoming one or more rejections provided by the examiner. A panel of three examiners, one being the examiner that issued the final rejection, considers the oral arguments and informs the applicant of its decision. If the panel upholds the final rejection, the applicant may nonetheless continue to pursue the application in the usual manner, filing a Notice of Appeal or a Request for Continued Examination. However, this P3 program provides the option of having others to review the rejection before continuing to argue before the same, original examiner.
The P3 program is free to use, but is currently limited to the first 200 requests within each technology area, and within the 6-month pilot term ending on January 11, 2017. At the time of this writing, most technology areas have already reached this limit. However, the pilot program may be renewed or formally instituted if the results prove favorable.
Conclusion
Through these and other programs, the USPTO has and continues to work towards improving the certainty and consistency of the patent process and the patents granted through it. Moreover, by establishing quality metrics based on more consistent data, the effectiveness of such programs can be more accurately assessed, driving continuous improvement into the future. This in turn provides predictability and uniformity to support effective management of intellectual property assets and the avoidance of liability.
We are pleased to announce that Aaron Olejniczak and George Solveson have been selected to the 2016 Wisconsin Super Lawyers list and Ryann Beck was named a Rising Star in the State of Wisconsin. This is an exclusive list, recognizing no more than five percent of attorneys in the state.
Andrus attorneys Mike Taken, Ed Williams, Joe Kuborn, Aaron Olejniczak, and George Solveson, were selected by their peers for inclusion in The Best Lawyers in America 2017 and Andrus Intellectual Property Law was ranked as a "Tier 1" patent litigation and trademark law firm in the Milwaukee metropolitan area.
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