November 20, 2007
The USPTO has been outsourcing the examination of PCT applications for a little over a year now, yet most applicants remain in the dark. What's the upshot?
A quick note on PCT applications: Under the Patent Cooperation Treaty, an inventor can file a single international patent application (PCT) in one language with one patent office in order to simultaneously seek protection for an invention in up to 117 countries throughout the world. The PCT application essentially reserves a priority date for all national filings, thus postponing total expense and allowing an applicant to better assess commercial viability of their invention.
As per the
PTO contract announcement, PCT applications are currently contracted out to
Landon IP of
This was the first inkling I had that these reports are being done by untrained nonexaminers who may have no clue what the law regarding novelty and obviousness/inventive step is (insert gratuitous comment about recent USPTO examiner performance HERE). These reports are the basis on which the examiners in many non-US countries rely (and form the basis for the stance of the US examiner who handles the case from that point forward).
Further insight provided to the attorney:
The kicker is when I asked him if ABC was providing any training in PCT regulations, patentability standards, and whatnot. No, they just hired him because he had a technical background and had been an inventor on a few US applications.
So, how does this outsourcing project work?
Landon and Cardinal both hire applicants from a wide range of backgrounds, including many former USPTO examiners. In fact, many examiners have jumped ship in order to join one of these firms. Landon IP hires in-house, full-time employees, and work-from-home contractors, paid per PCT, to examine PCT applications. Although, recently they abruptly switched over to primarily in-house people, thus leading to unemployment for many recently hired contractors who were forced to sulk away with their tail between their legs; one soared away as a Patent Hawk. Landon IP provides approximately 6 hours of training, at their headquarters, regarding PCT law and searching technologies. While possibly sufficient for ex-examiners, this is hardly adequate for those with technical backgrounds and limited patent experience. Cardinal Law Group provides even less training: training materials but zero in-person tutelage. Cardinal allows many of their employees to work from home on a paid per PCT basis.
Since the USPTO pays these firms per application, and since each firm pays their contractors likewise, there is great incentive for the firms and their employees to finish the work as quickly as you can say “crappy prior art”.
Of course the USPTO wouldn’t dare mail out these outsourced examinations without first passing it through their rigorous quality standards. The key to slipping through such air-tight quality checks is to train your employees to adopt the PTO mantra of “all inventions are non-novel”. With an indication that all claims lack novelty and/or inventive step, written opinions are mailed out to the applicant without ever a second look.
Although this all looks depressingly bad for the state of
US examined PCT applications, there is a silver lining. The quality of
examination of PCT applications in house at the USPTO might be even worse.
Although examiners are not paid per application, examiner production and
therefore performance is directly tied to how quickly work is completed.
Written opinions and search reports for PCT applications are rarely reviewed by
supervisors and are only reviewed by quality assurance specialists for form not
substance. Therefore, PCTs have always been considered easy counts for
examiners. Last Friday of the quarter? Need to bump your production? Fly
through a few PCTs. Furthermore, many PCT applications are examined
concurrently with their
So, on one hand we have possibly under-trained contractors paid on a per opinion basis, and on the other hand, examiners who couldn’t care less about PCTs, since they aren’t real patent applications anyways.
The lesser of two evils? It might be a toss up. At least with the PTO contracting out PCTs, the pendency of US applications will theoretically decrease.
In defense of our relatively top-notch patent system: if you want to see truly horrific PCT search reports and written opinions, take a look at the JPO or EPO.
Posted by Mr. Platinum at November 20, 2007 3:15 PM | The Patent Office
As a current examiner, I can definitely state that management feels that examiners should invest the minimum amount of time as possible on PCTs. People in my work area have been told to just cite one or two references and cobble together a few sentences with nothing more. The expressed managerial rationale is that a PCT is not really used for patentability purposes but as a device to allow an applicant to lock in a filing date.
While I take some pride in my work, I do not have the luxury to disagree. Examiners are not given the same amount of production credit for a PCT as an American application and cannot afford to invest too much examination time in researching a PCT due to production goals.
Posted by: Mr. B at November 20, 2007 7:22 PM
"In defense of our relatively top-notch patent system: if you want to see truly horrific PCT search reports and written opinions, take a look at the JPO or EPO."
I can't tell if you were joking or saying this with a straight face. If you were serious: I routinely advise my clients to do their search in the EPO. Not only is it invariably done better than the PCT searching at the USPTO, but it's done ON TIME. Contrast this with the USPTO, where sometimes the search report isn't issued until after the deadline for entry into national phase.
Posted by: DJF at November 21, 2007 5:58 AM
I reviewed the website of one of those companies doing work under the contract and found that their "Director of Patent Analytics" was a former examiner I used to deal with frequently. Dumb as a box of hammers.
They also claim that because they don't practice patent prosecution, that they can write apps with minimal conflicts of interest.
Sounds like somebody over there needs to take a refresher course in professional responsibility. Or maybe an actual course.
Posted by: JD at November 21, 2007 10:50 AM
EPO search reports and written opinions are indeed truly horrific, to a US readership. They horrify by revealing just how low is the quality standard at the USPTO. Mind you, quality at the USPTO might be improving. It's now quite a long time since I was horrified by an ISR from the USPTO which allocates category Y to single prior art references, unlinked to any other reference on the ISR. One had the feeling that the USPTO Examiners issuing these things had had no PCT training whatsoever, and that nobody in the USPTO was monitoring quality.
Posted by: MaxDrei at November 21, 2007 2:07 PM
It is a common knowledge that USPTO PCT search reports are completely random and utterly useless to anybody
What they usually do is just perform a simple patent database search on several separate keywords from patent claims to come up with a few random US patents, sometimes totally unrelated to the invention described.
Then they assign leter Y to those "prior-art" references and viola, the PCT search report...
I am wondering if they do this sort of thing now to actually reject patent applications after KSR ruling
With this being said, it is also a common knowledge that issued EPO patents have no property rights associated with them and thus are totally useless to smaller patent holders
Same will happen to US patents after they "harmonize" patent system here through "patent reform"
Posted by: angry dude at November 21, 2007 4:43 PM
Ha. So EPO patents are "completely useless" are they? Not my experience at all. I'M sad that this is your experience. So, what's going adrift, between the US inventor and the judges in Europe that decide whether a claim is valid and infringed? There is a chain, right, and the links are patent attorneys. A chain is only as strong as its weakest link. The essential point to grasp is that the environment for claim validity is more hostile after EPO issue, in inter Partes proceedings, than before issue in ex Parte examn on the merits in the EPO. How could it be otherwise, in a rational system? If it were, the Patent Office would be discarding the gold along with the dross. So, derrrrr, rehearse your validity in the EPO, while you still can, ready for the real battle after issue, and then after issue enjoy intimidating competitors, just like you do in USA.
Posted by: MaxDrei at November 23, 2007 2:19 PM
Any updates regarding Landon IP's use of contractors as Patent Analysts?
Posted by: Lain at February 21, 2008 2:17 PM
Received an update about 3 weeks ago. Landon has apparently pulled back on their use of contractors, as anticipated, in favor of in-house employees. The few contractors that remain are receiving a very limited amount of work, and are presumably looking to sever all ties with Landon. Also, heard the rumor that Landon lost at least a portion of their PCT contract with the USPTO. Can anyone confirm this?
Posted by: Jordan Kuhn at February 21, 2008 2:29 PM
Landon IP just lost their Medical Device contract line item with the USPTO for failure to perform. Everyone in upper management at the PTO has been discussing the possibility of this happening for quite a few months. Rumor mill has been very very hot and has proven to be accurate. Apparently, the Mechanical Engineering contract line item is next on the list.
This company has lost quite a few of its most experienced personnel and more are planning on leaving according to former examiners there who communicating with former colleagues back at the "factory".
We never should have given out this contract in the first place. It was a dumb idea. Unless the private sector hires very experienced personnel, the job will be done very poorly.
Posted by: PTO Primary at May 4, 2008 7:51 AM
Jordan, why would you come on this board and pass on rumors? "Rumor mill has been very very hot and has proven to be accurate"? And how do you know that there's more are planning on leaving?
Maybe examining medical devices are not as cost effective as the other line items? Have you ever thought that Landon may have dropped it for that purpose? Or perhaps the USPTO wants to keep it because it's more cost effective for them? Or maybe that want to re-align the contract by providing a whole line item to one company as opposed to splitting some of the line items among two companies.
And what do you mean by upper management? Are you upper management?
I'm sure that Landon has a lot better retention rate than the USPTO does with patent examiners. And don't forget that this is PCT cases. Patent examiners do a crappy job on PCT cases period. It's one of the reason why it's being outsource. I know because I was a patent examiner. You can hire a high school senior at minimum wage and s/he can do a better job. So, let's not give us this crap about hiring "very experienced personnel."
When I was at the USPTO, I've seen some cases submitted by Landon to the USPTO. They do a lot better job than we examiners do.
And for that individual who made a remark about the Director being dumb, if you are going to make that kind of unsubstantiated comments, why don't you stop being a coward and put your real name to the post? It's only fair.
There has to be some integrity standards to blogs like this. Otherwise, there will be a lot of trolls making a lot of noise that will distract intelligent discussion.
Posted by: Sarah Delane at May 27, 2008 7:23 PM
I'm a former Landon contractor who has kept in touch with Landon employees and contractors (some of which I worked with at the PTO). Word on the street now is that the contractors are getting a lot of PCT work again. Landon's shifted most of their in-house work to the commercial side.
Retention seems to be much better there than at the PTO, but it could just be that those I kept in touch with I consider to be the cream of the crop from my PTO training class.
Posted by: LandonCastaway at July 1, 2008 8:19 PM
"There has to be some integrity standards to blogs like this. Otherwise, there will be a lot of trolls making a lot of noise that will distract intelligent discussion."
So I guess the following quote of yours is something you regard as intelligent discussion:
"Patent examiners do a crappy job on PCT cases period. It's one of the reason why it's being outsource. I know because I was a patent examiner. You can hire a high school senior at minimum wage and s/he can do a better job."
So did you do a crappy job on PCT cases too? Would a high school senior making minimum wage have done a better job than you did?
My guess is yes.
So it's okay for you to basically trash the entire examining corps' handling of PCT cases, but if I make an observation about the professional qualifications of one of Landon IP's people, I'm making a lot of noise that distracts from intelligent discussion?
But you signed your real name to your post, so I guess that makes your comment "substantiated."
You're friggin' ridiculous.
Posted by: JD at July 2, 2008 6:48 AM
It is true, Landon is contacting again some of their contractors (they contacted me and so far I have done quite a few cases).
I take insult on the comments made by the poster regarding the quality of Contractors work. I am a former Examiner who left the agency on great standing (107% and only 1 kickback during my 2 years of service). Unlike, most examiner at PTO, I do a whole day of art searching (sometimes 2-3 days) before writting an opinion (which I know will be a waste of time at PTO given our count system).
Posted by: Carm at July 2, 2008 11:11 AM
Although I think it's rather ridiculous that the PTO is currently only current on providing timely ISR's in about 4% of the PCT applications filed in the USPTO as the ISA, outsourcing the search seems like a good idea.
Examiners have little motivation (i.e. 1/2 count) to prepare the ISR, while outside searchers at least have a financial incentive to do a credible job.
Either way, I advise all my clients not to waste their time filing a PCT with the USPTO as the ISA. Waste of time and money.
Posted by: JD at July 2, 2008 11:42 AM
Thank you all for the updates. Please continue to keep us posted.
Posted by: Mr. Platinum at July 3, 2008 6:57 AM
Many of the comments are about Landon IP, but does anyone know what's been going on with Cardinal (the other company awarded the contract)?
Posted by: The Lame Lurker at July 4, 2008 7:50 AM
Cardinal is doing an awesome job. Our people are extremely qualified and we have low error rates. Nuff said
Posted by: C-guy at July 5, 2008 1:02 PM
"Cardinal is doing an awesome job. Our people are extremely qualified and we have low error rates."
Considering that your "competition" is the PTO, I should hope so.
Posted by: JD at July 7, 2008 10:32 AM
"Cardinal is doing an awesome job. Our people are extremely qualified and we have low error rates."
Considering Cardinal pays a fraction of what Landon pays per PCT (at least they did 6 months ago), it is hard to believe that the people at Cardinal are more qualified than those at Landon or that they are performing a more "awesome job". But, if so, the people at Cardinal should be commended for providing a better service while being paid significantly less.
Posted by: Mr. Platinum at July 7, 2008 10:41 AM
What does "failure to perform" means? Is it not doing enough PCT work on a related area or having too many kickbacks or both?
I never really got why Landon took the PCTs away from the contractors to do them in-house (given that I had only one kickback from PTO -from a total of 70something PCTs- as they didn't agree with the art applied). I always wondered why the took the risk of giving these jobs to people that in most cases needed to be trained from scratch.
Posted by: Carm at July 8, 2008 3:47 AM
Outsourcing patent search function to private firms is not the way to go. It usually takes an examiner about 3-4 years of rigorous training before that examiner could become fully proficient in examining a patent application. Landon IP has been hiring a lot of former patent examiners, many of whom barely finish their 8-month training at the USPTO, to work on PCT applications. With little experience, I doubt that the new hires will produce quality office actions. To achieve quality, I think the USPTO should just contract the PCT applications to primary examiners.
Posted by: Patent Examiner at October 31, 2008 9:36 PM
"To achieve quality, I think the USPTO should just contract the PCT applications to primary examiners."
Yeah, because we all know what a bang up job they do for that half a count.
Posted by: JD at November 1, 2008 2:24 PM