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February 22, 2006

Patent Office Blows Patent Reform Raspberry

Patent Commissioner John Doll's viewpoint on the need for Congress to pass patent reform legislation: no thanks, we've got it under control. To patent applicants, Doll says: "do some work for us."

In an interview granted to InformationWeek, Doll claimed, "We are able to control the problems and concerns, the challenges that we have through rulemaking, that we really don't need statutory changes." Doll cited the controversial proposed new rules limiting the number of claims examined, limiting continuations, requiring prosecutor patentability reports, and restricting Markush group claims.

Doll wants to limit the number of prosecutor-cited prior art references to 20 or 30, allowing for more citations only with written analysis of the relevance of the prior art.

And, with a backhand flourish, Doll threw cold water on the idea of ex parte prior art submission, an idea which the InformationWeek interview geek was hot on: "In concept, it's a good idea. It's not a good idea if people are allowed to submit prior art that don't understand the law or the ramifications of the law. What someone who is totally unskilled in patent law considers to be a pertinent reference, under the law, could be a totally useless reference. But allowing people to submit prior art at their will is not a good idea. We need a filter in that system to make sure that this is valid prior art, or, again, what you are doing is just dumping references on the examiner and nobody else is taking the time to filter according to the laws that regulate patentability determination."

Doll's take on the impact of pendency was that it increases business uncertainty for affected companies. In an effort to foil criticism of negligence in handling the workload to date, Doll's solution is to hire more examiners, but noted difficulty in finding suitable candidates, particularly in the electronics and software fields where demand (i.e. pendency) is greatest. There's a fantastic air to the concept that hordes of green examiners would improve patent quality, as opposed to clogging the patent appeals board. Maybe that's why the quickie appeal has become a permanent fixture. Doll said nothing about measures to retain more examiners in an agency that suffers high turnover.

Doll observed that a first-to-file regime would lessen the workload on the Patent Board of Appeals & Interferences, but demurred expressing an official opinion.

Defending curtailing continuations, Doll complained, "Now, you can refile an application and have it examined over and over again as many times as you like. I don't know of any other governmental agency or court that allows you to retry your case until you get the answer you'd like." Doll guessed the impact of lessening continuations to reduce filings by 5% to 7%. Doll neglected to mention that the patent office is the only governmental agency that makes money solely from its clientele, an observation that should dilute the illusory benefit of such curtailment, if the point is anything but absolutely cutting examiner workload, as applicant fees foot the bill. Further, continuations are an easier examination than new applications, as the examiner has a specific history with the technology, assuming that the same examiner is still with the agency. Continuations is a non-problem that Doll thinks he can solve.

Considering the newly proposed rules, the combination of limiting claims under examination to 10 and curtailing continuations would make patent office policy a powerful sphincter against patenting sophisticated inventions.

Doll said the proposed limitations were malleable, but, if an applicant is wanting to exceed the agency's newly set limits, "we're going to ask them to help us share the burden and do some work for us."

In limiting the number of claims examined, curtailing continuations, restricting the number of cited art references, and requiring extra work by prosecutors, the patent office's apparent strategy is to cut overall workload and simplify the examiner's job, at potential sacrifice of quality, by choking the number of patent applications and examination applied, because the agency has been unable to maintain adequate staff, and recognizes that the staffing problem is not easily fixed, regardless of budget. The patent office appears to be increasingly self-serving at the expense of inventors, particularly increasing prosecution costs and making prosecution more difficult.

Posted by Patent Hawk at February 22, 2006 8:28 PM | The Patent System


The picture of Doll included in this post is in JPEG format. JPEG images use a technology that is patent by Forgent, Inc. Have you paid a license fee to Forgent for use of this image format on your blog? If you haven't, aren't you worried that your royalty-free use of JPEG is hypocritical given your stance on the validity of software patents in general?

I'd love to see how you felt about this after receiving a cease-and-desist letter.

Posted by: Thomas Q. at February 24, 2006 10:59 AM

Hi commenter Thomas Q.:

In past your depth? The software used to capture the image has a paid-up license to Forgent, so I'm not infringing their JPEG patent. Besides, as a pissant customer using JPEG on a noncommercial site, no damages exist. To the precise, and moot, point, however, the image was .gif, not .jpg.

Try getting a different religion than anti-patent; try finding something to believe in, or at least tilt at some real injustice, of which the world is full.

Posted by: Patent Hawk at February 24, 2006 1:27 PM