US Government Seeking IP Law Experts; Signs Work-Sharing Deals

By Liza Porteus Viana for Intellectual Property Watch
WASHINGTON, DC – Private patent law attorneys should answer a higher calling and serve in the United States government so that experienced, practiced experts may help steer the country’s patent system toward a better future, the chief judge of the US Court of Appeals for the Federal Circuit said this week.

Chief Judge Paul R. Michel said Monday that the US Patent and Trademark Office and Congress are in great need of qualified experts from the patent field to fix the patent system and spur effective patent reform.

While he takes heavy criticism of the US patent system “with a little bit of the proverbial grain of salt,” since many tend to dramatise the state of the patent system, he agreed that the system is, perhaps,” bent.” The USPTO, he said, is also “at least impaired, impeded, battered, swamped.”

“It’s very suspicious to me” that the allowance rate – or applications accepted – was 78 percent a few years ago and is now around 40 percent, Michel said at a BNA/ABA intellectual property patent law conference in Washington. “That seems like a wild gyration to me.”

Michel also said it’s “very worrisome” that the USPTO is hiring 1,000 new patent examiners per year, but there are still almost as many leaving. There are a “substantial” number of examiners who have been at the USPTO for less than three years, the judge said, and many are working from home because of a lack of workspace at USPTO.

The USPTO says that as of 30 September, approximately 2,900 examiners of the 6,000 total have been with the agency less than three years. About 1,200 examiners are being hired each year. As to the space issue, telework is an option available to many patent examiners once they reach a certain level of experience and competency.

When a new US president takes office, he will eventually need to appoint a new USPTO chief, and undersecretary.

Michel urged private practitioners to consider putting their applications in for the job of USPTO solicitor, or agency head – even if it’s only for two years or so. He also urged them to seek positions on the Senate or House judiciary committees, to ensure that effective patent reform legislation gets passed, and to ensure that quality judges are confirmed to the federal circuit in the next few years.

“I hope you’ll give some thought to that because it could really make quite a difference in the coming years,” Michel said.

IP Rights “Under Attack”

Marc Adler, former chief technology and intellectual property counsel at Rohm and Haas Company in Philadelphia and former president of the Intellectual Property Owners Association, agreed that it is imperative the next USPTO chief should come from the field, so that they understand the concerns of the innovator community and can work with patent system users to improve the overall quality of the system.

Saying funding for the USPTO – under $2 billion – is currently “woefully inadequate,” Adler also said the incoming USPTO chief should look at examiner pay and performance metrics. Ensuring higher quality patent examinations could go a long way to boosting confidence in the system, he said.

The quality of patent applications and examinations is of great focus in the current patent reform debate.

Congress needs to pass patent reform as soon as possible to restore confidence in a system that has “so far failed to keep up with innovation,” Adler said. “Time is running out for the system to adapt.”

But shifting more of the burden to inventors – the patent applicants – is not the way to go toward achieving good patent reform, Adler said. The USPTO has been stressing that quality submissions by applicants is key to making the examination process more efficient.

“In other words, use a carrot instead of the stick that they’ve been using,” Adler said of the USPTO.

Other routes, such as post-grant opposition, would be more helpful, he said. The USPTO also should speed up work-sharing efforts with other patent offices around the world, including the Common Application Format, which will simplify and streamline application filing requirements in the USPTO, Japan Patent Office (JPO) and European Patent Office to allow applicants to prepare a single application that is accepted at the three offices.

The idea is, as the number of patent applications filed continues to skyrocket, these efforts will reduce the workloads of patent offices. When examiners cannot keep up with the work and examinations take too long, patent quality often suffers, and confidence in the entire system decreases.

There is a “widespread public cynicism” that intellectual property laws favour large countries and companies, and that they do not keep up with innovation, Adler said. “This is like a downward spiral.”

Adler also said intellectual property rights are “under increasing attack” in developing countries, by younger generations who seem to care little about such rights, and the media in general. The shoddy quality of some patents and applications contributes to this.

“Quality patents lead to greater respect by others,” Adler said.

USPTO Reaches Worksharing Deals

The USPTO recently signed agreements with several countries to increase worksharing.

Director John Dudas recently signed a statement with JPO Commissioner Takashi Suzuki focusing on enhanced cooperation on protecting intellectual property rights, including patents. The two offices have trying to harmonise patent procedures through the Patent Prosecution Highway and Priority Document Exchange.

The USPTO and Korean Intellectual Property Office (KIPO) also signed a memorandum of understanding on 23 September to promote work-sharing by harmonising the patent examination process of the two countries, where each office can utilise the results of the other. The countries will establish a common search database, a standardised patent classification system, and develop common examiner training. The USPTO and KIPO will hold several working-level meetings later this year to begin implementation of these programmes.

Meanwhile, USPTO and IP Australia (IPAU) also reached an agreement in which IPAU will act as an International Searching Authority (ISA) and an International Preliminary Examining Authority for certain international applications filed with the USPTO under the Patent Cooperation Treaty.

An applicant selecting IPAU as the ISA will pay a search fee of $1,514, which is less than the USPTO fee. The international search must have also been performed by IPAU, and applicants must pay preliminary examination and handling fees directly to the IPAU. The USPTO and IPAU are two of 15 offices authorised to conduct international searches and international preliminary examinations under the PCT. The agreement goes into effect on 1 November.

Liza Porteus Viana may be reached at info@ip-watch.ch.