The President-Elect @realDonaldTrump and his transition team @transition2017 are working on appointments to his new Cabinet. One of the chairs is reserved for the new Secretary of Commerce. Following close on Commerce’s heels will be appointment of a new Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO or Patent Office or simply Office). That imposing title—yes, that’s all rolled into one job—is usually shortened to USPTO Director.
What to look for in the new USPTO Director
The next USPTO Director should be (1) an outsider, (2) a registered patent attorney, and (3) committed to speeding up the process of granting worthy patents.
The first criterion almost speaks for itself: If you’re going to shake things up, you appoint an outsider, by which I mean someone who is not a career civil servant.
The second criterion is less obvious: The Director should be a person who has represented inventors in dealing with the Office. That may appear to conflict with criterion 1, but it does not. There’s a big difference between a real estate developer and a building inspector. Only registered patent attorneys have the knowledge, experience, and capability to understand inventors, business clients, their needs for patents, and what they deal with when they file and prosecute patent applications. (I don’t mean to give short shrift to trademarks, one of the hottest being the last name of the President-Elect.)
That leaves criterion 3: the need for commitment to speeding up the process of granting worthy patents.
Speed up the issuance of worthy patents
The purpose of the Patent Office is to grant worthy patents. Since 1787, the Constitution has promoted the progress of technology and commerce by providing incentives for inventors and their companies. The patent system adds the “fuel of interest” to the “fire of genius,” as Lincoln put it. A patent conveys the exclusive legal right to the claimed invention for a limited term of 20 years from the filing date. This translates into market leadership, revenues, and profits.
But the patent system is not working well now. It’s too slow and drawn out. Instead of granting worthy patents, the Office focuses on rejecting applications under the rubric of “quality.” See my previous post asking the Office for quality patents not just rejections.
Here are two simple, achievable goals for increasing USPTO productivity and effectiveness:
- Let’s have the Patent Office grant 40% (up from 10%) of worthy patent applications on the first Office action; and
- Grant 75% (up from 50%) of worthy patent applications by the second Office action, all within one year of filing.
You scoff? Ah, but what if I told you these metrics are already being accomplished now!
These goals are already being met in Track 1 examination. If the goals can be reached in some cases, they can be reached in all.
The first step in examination should not be to look for ways to reject Claim 1 and then paint all claims with the same broad brush.
No, the first step should be to look for merit in the patent application.
We know that 90% of patent applications are meritorious, because that’s how many ultimately are granted as patents! So why should the Patent Office beat inventors down with repeated rejections?
When the examiner finds merit in a patent application, she should look for allowable claims (including real consideration of dependent claims) or other patentable subject matter in the specification. And when she finds it, she should say so! Allow some or all of the claims. Or if there’s a way to clarify or distinguish a claim, say so! In this way, the grant rate can be increased to 40% on the first Office action.
The same approach will work for the second Office action, with the result being an increased grant rate of 75% by that point, with it all being accomplished within one year of the filing date.
This will have many salutary benefits. Above all, it will increase the patent system’s effectiveness in its Constitutional purpose of promoting progress in the advancement of technology and commerce. It also will cut down on the backlog of unexamined and other pending applications by reducing churn.
No rational person would intentionally create the current USPTO system, in which half of all patent applications require requests for continued examination (RCE), with average pendency of two and a half years.
The next USPTO Director should not be a career civil servant, but a registered patent attorney who has actually represented inventors and business clients in dealing with the Office. Above all, the new Director should be committed to speeding up the process of granting worthy patents.