By Kevin E. Noonan —

The following is part of a continuing series on how to address the
very real problems facing the U.S. Patent and Trademark Office.

A day after the day of rejoicing for inventors, patent practitioners,
examiners, and seemingly all of civilization, fair-minded people will
concede that the U.S. Patent and Trademark Office faces a daunting
task.  After years of neglect – from Congress raiding the users’ fees,
an inadequate number of examiners, technology-driven increases in the
number of applications filed, and a "count" system that has not
rewarded a style of examination that encourages prosecution to a
definitive end point – the Office is facing a massive backlog of
applications without sufficient resources to process them in a timely
manner.

If the patent bar is gladdened by District Court Judge Cacheris’
decision enjoining implementation of the new rules – representing an
attempt, albeit a misguided one, on the part of the Office to address
the pendency and backlog problems – it behooves us to propose
alternatives.  Patent Docs
will be posting a series of such proposals, and we invite our readers
to provide their own ideas.  As they used to say in the days of the
counterculture, "if you are not part of the solution, you are part of
the problem."  Patent Office management clearly thinks the patent bar
is part of the problem; it would be satisfying to prove them wrong.

Accelerated examination

A little more than one year ago, the Patent Office revised the procedures relating to accelerated examination.  Prior to the change, an applicant could file a "Petition to Make Special" in certain circumstances, including applicant age (if the inventor was at least 65 years old), ongoing activities of a third party that would constitute infringement once a patent was granted, and for certain technologies including treatments for cancer and acquired immune deficiency syndrome.  The Office abolished this system effective August 26, 2006 (while continuing the old practice on the basis of health or age) in favor of a pilot program permitting an applicant to obtain accelerated examination if the applicant was willing to satisfy certain new requirements.

The benefit of accelerated examination is a "promise" that the applicant would obtain a patent within 12 months from filing.  The requirements are:  the application must be complete upon filing, be filed electronically, and specifically request accelerated examination; that it contain no more than 3 independent claims and 20 total claims and not contain a multiply-dependent claim; applicants agree to telephone restriction requirements, and to pursue claims to only one invention (i.e., not to traverse the restriction), and further that applicants agree to telephone interviews even prior to a first Office Action on the merits; and that a pre-examination search is performed.  Examination occurs with "special dispatch" and all actions except a final rejection are subject to a one-month shortened period for response; extensions of time are not allowed except for unavoidable delay, and failure to timely respond results in abandonment.  The most burdensome aspect of the process is that a simple information disclosure statement does not suffice to bring prior art to the examiner’s attention.  Rather, applicants are required to provide a detailed explanation of the art, along the lines of the "examination support document" that is a part of the Office’s new rules enjoined by Judge Cacheris of the District Court on October 31st.

The Office has touted this program as a way for an applicant to avoid long pendency times for inventions that would benefit from having patent protection obtained rapidly.  There are certainly technologies that have (relatively) rapid obsolescence times and that could benefit from this program (see "Could Creating a U.S. ‘Utility Model’ Patent Fulfill the ‘Need’ for Patent Law Reform?"); according to Office statistics, 650 applications have been designated for the program and the Office has granted 97 patents since the program went into effect (see "AE Petitions Status").

As has become its penchant recently, the Office seems to be onto something here, but its own bureaucratic approach and some fundamentally flawed assumptions have prevented it from using the accelerated examination procedure more broadly (and some of this depends on unnecessarily burdensome requirements).  The program could be useful in addressing the Office’s major problem – the backlog of unexamined applications – with only a few small changes.  First, permit an applicant to designate any application, especially pending ones, to fall within the scope of the modified accelerated examination schedule proposed here.  Second, have the decision point be at 18 months rather than one year, to give applicants and the Office sufficient time for a proper examination.  Third, retain the limitations to a single invention but with a total of 5 independent and 25 total claims, as in the enjoined new rules.  Fourth, retain the expedited examination schedule (shortened statutory response periods and limitations on extensions-of-time) to prevent the program from failing to meet its main goal, reducing the backlog.  Fifth, continue the emphasis on telephone conferences between the Examiner and applicant’s representative and require all formal submissions to be made using the electronic filing system (EFS).

The major difference between the current system and the one proposed here is that an applicant would not file an examination support document.  Instead, as part of the telephonic interview the examiner and applicant’s counsel would fully and frankly discuss the art and, in short, provide verbally all of the substantive information now required in the document.  The difference is that none of this would become part of the written record.  While seemingly counterintuitive, such a scheme is the only way, in view of the current status of the law regarding inequitable conduct, that counsel would be comfortable having the type of discussion required to expedite examination.

Although seemingly radical, on reflection this concept is much less so.  For example, it is true that such a system would run counter to the prevailing trend to increase transparency in the examination process, including such features as publishing pending U.S. applications and making the prosecution history publicly available upon publication.  However, it is informative to remember that less than 10 years ago U.S. applications were not published, and the Republic survived the prior two hundred twenty-four years with a patent system of confidential, ex parte prosecution.  Moreover, the American Inventor Protection Act of 2000, which required U.S. patent applications be published, did not require the Office to make a published application’s file history publicly available prior to grant.  It gave the Office the authority to do so but did not require it, and consequently many applicants had their counsel file applications prior to the November 2000 deadline date to prevent public access to their "ex parte" prosecution files.  Similarly, it has only been in the past decade that the Office had required applicants and examiners to put formal interview summaries in the prosecution file history; prior to this change, interview summaries like "prior art discussed with applicant’s counsel and agreement reached" were common, with no additional information being available.

Additionally, present practice is replete with applicants and their representatives putting qualifying language on the record to prevent courts and accused infringers from misconstruing statements that could later be taken out of context.  Phrases like "without acquiescing to the asserted grounds of rejection" and "although applicants dispute the interpretation of the art in the Action" and "solely in an effort to expedite prosecution of the pending claims to allowance" are frequently encountered in the remarks section of many Office Action responses.  This tendency has been exacerbated by the expansive view of prosecution history estoppel, both with regard to claim interpretation as well as the application of the doctrine of equivalents, espoused by the Federal Circuit over the past decade or so.  The purpose of this qualifying language is merely to prevent an accused infringer from making an ex post facto argument that prosecution was undertaken in bad faith.  This is the risk every applicant and their counsel takes, since allegations of inequitable conduct have been and continue to be a "veritable plague" on the patent system.

Even though almost always alleged, however, inequitable conduct is rarely proven.  While this is due in part to the heavy burden required to establish inequitable conduct, the burden is no heavier than the burden required to prove invalidity (i.e., clear and convincing evidence).  Yet invalidity is found more frequently than inequitable conduct.  While a number of explanations can be proffered for this result, the most likely one is also the simplest:  that the overwhelming majority of applicants and their counsel simply do not commit inequitable conduct.  For applicants, the potential costs (including Walker Process damages) of an inequitable conduct determination by a District Court discourages any tendencies towards committing inequitable conduct, while most counsel are unlikely to risk their livelihoods and the disqualifying wrath of Mr. Harry Moatz and the Office of Enrollment and Discipline for any one patent or client.  Indeed, one of the paradoxical accusations raised against applicants and their counsel as a justification for ESDs is submission of cumulative art, which is almost always motivated by the fear of an inequitable conduct allegation.  Thus, it is reasonable to assume that for the vast majority of cases there would be no enhanced risk of inequitable conduct should the Office permit an applicant’s representative to have an ex parte, off-the-record, full and frank discussion of the art with an Examiner.

The benefits of this practice are just all of the purported benefits of the proposed (and enjoined) ESD system.  Examiners would benefit from having applicants prioritize the prior art based on how close the art is to the claimed invention, and would also benefit from being able to have applicants point out the portions of the art that disclose elements of the claimed invention.  Good-faith applicants, the overwhelming majority, would be in the best position to know the patentable distinctions with the art and thus have no substantive impediment towards pointing out where the art disclosed, and did not disclose, the elements of the claimed invention.  Moreover, knowing this discussion was part of the patentability process would encourage applicants to have their counsel perform a pre-filing search, which would result in more focused claims in these applications.

The Office could also reserve the right, upon good cause provided, for the Examiner to propose that certain portions of the information covered in such an ex parte discussion become part of the prosecution file history, most probably without attribution.  Applicants could always have the opportunity to drop out of the accelerated examination program should they disagree with an examiner’s decision to make such information of record.  Applicants would retain the right to prevent the Office from disclosing the nature of any such admissions upon request, although doing so would result in foreswearing the advantages of the accelerated examination program.  For applicants, the advantage is obtaining patents more rapidly.  For the Office, the advantage is eliminating some portion of the backlog within 18 months, as well as the possibility of expanding the program to maximize the number of applications choosing to exercise this option.

Whether one thinks that this scheme has merit will depend on whether they believe that the overwhelming majority of applicants and their counsel engage in good-faith efforts to zealously obtain the greatest extent of protection that their invention legitimately deserves, or if one believes that applicants and their counsel routinely engage in inequitable conduct during patent prosecution (despite empirical evidence to the contrary).  Put more bluntly, if one believes (as current Office management seems to) that their customers and counsel are liars and thieves actively trying to "game" the system to obtain a benefit they don’t deserve, then the scheme proposed herein will appear hopelessly naïve and unworkable.  If however, as both evidence and common sense would persuade the unbiased observer, it is the best interests of applicants and their counsel to honestly prosecute patent applications to allowance, and if that is in fact what happens in almost all instances, then perhaps it would be possible to actually craft a system where the Office and their customers work together to ensure that granted U.S. patents are valid and enforceable.  The Office declaims loudly that such a cooperative effort is what they want; it is time they took steps that would help us believe them.

For additional articles in the "Post-GSK" series, please see:

• "Deferred Examination," November 12, 2007
• "Co-owned, Co-pending Applications," November 11, 2007
• "Increased Fees for Continuations," November 8, 2007
• "Regional Patent Offices," November 7, 2007
• "Tailoring Protection and Examination," November 6, 2007
• "Annuities," November 1, 2007