Comments on the USPTO Strategic Plan
Posted on Tue, Aug 03, 2010
In a notice published in the Federal Register last month (75 Fed. Reg. 39493), the United States Patent and Trademark Office requested comments on its 2010-2015 Strategic Plan. The period for comments closed yesterday, August 2nd.
In the spirit of openness, I want to share what I submitted. I invite any comments on my thoughts below.
Comments for Draft USPTO 2010-2015 Strategic Plan
I appreciate the opportunity to provide comments about the Draft USPTO 2010-2015 Strategic Plan. First, as a member of the patent bar and a patent attorney, I am impressed with the Plan on numerous levels: the extensive breadth and scope of improvements Director Kappos and his team seek to address; the powerful multifaceted approach to improve patent quality both by the Patent Office Examiner corps and applicants by, for example, altering Examiner work plan incentives, providing better IT tools for Examiners and enabling applicants to prioritize examination of applications; and, the delivery of efficiency and execution demonstrated by the Office’s timely Interim Guidelines for Bilski.
The patent bar has had high expectations of Director Kappos and this Plan validates those expectations. I hope that the factors upon which the Plan relies for success will be realized.
Second, I offer high-level suggestions with the notion that they require further analysis of decision-making authority and other legal or practical limitations. They are intended to address issues in the patent industry on a practical level:
a) “Forum” shopping considerations for the approach that the source of prior art searches is first patent office (U.S. or international) in which a patent application is filed. One area to consider is the variation in quality that may exist between patent offices and the potential of “forum” shopping to offices where there may be more favorable search results. While the U.S. pilot and subsequent execution are assumed to have quality control processes, a misalignment may occur where stakeholders detect a process advantage at a given patent office. Additional stakeholders seeking the same patent office can exacerbate the problem. Rising volume at a given patent office, either due to more favorable or expedited search results, also may put pressure on the quality produced by the office as the volume increases.
b) Cost-effective post issuance patent quality review. The NPE litigation data continues to show an increase in litigation assertions particularly in jurisdictions viewed as friendly to NPEs. There also is wide recognition and a target set by this Patent Office of patent quality improvements.
With the statistic that nearly half of all patents litigated to judgment are found to be invalid (John R. Allison & Mark A. Lemley, “Empirical Evidence on the Validity of Litigated Patents,” 28 Am. Intell. Prop. L. Ass’n Q.J. 185 (1998)), and the general notion of $1 million in costs for alleged infringers pre-trial, litigation is not the optimal venue to analyze issued patents asserted in litigation in the first instance. Alleged infringers have attempted to direct this analysis in reexamination requests to the USPTO as an alternative to trial. However, there is an uneven response of courts to stay litigations even where alleged infringers have not received notice of infringement. Often, alleged infringers’ first awareness of patent infringement assertions is from complaints filed to initiate litigations.
One basis for this unevenness is the long pendency of reexaminations. In one recent decision, the denial of a stay for a filed reexamination was simply on the prejudice of the average pendency of the litigation being much less than the average pendency of inter partes reexamination. Telecommunication Systems, Inc. v. Sybase 365, Inc, 2:09cv387. E.D.Va. (Dec. 2009). One approach for the coordinated action between the USPTO and federal judiciary suggested in the Plan is for reexaminations filed within a predetermined period of time from litigation filings (e.g., 6 months), to be processed while the litigation is stayed. Reducing the reexamination pendencies, which already is a stated goal of the USPTO, would need to be an important component of the coordination to reduce the burden to alleged infringers and the public of the cost of litigation where patent quality generally remains uncertain. Successful implementation of the USPTO 2010-2015 Strategic Plan requires time to filter through the patent application process. It will be several years before the success of this Strategic Plan is realized by the private sector.
Cheryl Milone, B.S.E.E., Esq., CEO and Founder of Article One Partners