Sunday, July 31, 2005

Change in patent reexaminations at USPTO

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) has implemented new processes for handling reexamination proceedings to improve timeliness and quality. Prior to the new initiative, reexamination cases were assigned to examiners according to technology. Under the new initiative, 20 highly skilled primary examiners who have a full understanding of reexamination practice and relevant case law will concentrate solely on reexamination. The 20-examiner unit began operation earlier this week and all new requests for reexamination will be assigned to them. Using skilled examiners assigned to a single unit will enhance the quality and reduce the time of reexaminations by allowing the USPTO to monitor more effectively the reexamination operations.

<-- from PTO press release, July 29, 2005


Probably not unrelated to patent reform 2005. If re-examinations are timely and well done, the need for oppositions is diminished. How much added value is there to having depositions (and rebuttal depositions) above and beyond a good look at the prior art? Oppositions are probably not cost effective at the margin.

As a microcosm, look how befuddled the FTC and the NAS were over conflicting testimony over patent grant rate (ie, Quillen vs Clarke). If testimony could not help them to resolve an issue (what is the patent grant rate?), why should they recommend an opposition procedure to "help" the PTO? The experience of the FTC and the NAS over patent grant rate undermines their recommendations as to the utility of patent oppositions. [The failure to distinguish between Quillen and Clarke reminds one of the CBS News coverage of Joe Newman's perpetual motion machine. There was no one on the CBS Evening News to challenge Newman's claim. On the contrary, the report included endorsements from two "experts" who had examined Newman's Energy Machine. Roger Hastings, a boyish-looking Ph.D. physicist with the Sperry Corporation, declared, "It's possible his theory could be correct and that this could revolutionize society." Milton Everett, identified as an engineer with the Mississippi Department of Transportation, told viewers, "Joe's an original thinker. He's gone beyond what you can read in textbooks." Watching the CBS broadcast that evening, most viewers must have been left wondering how the Patent Office could be so certain Joe Newman was wrong.
(see, for example, Newman did not get a patent, although he did win a proceeding against the PTO. Note that CBS News covered Newman not once, but twice, in 1984 and in 1987. Returning to the "patent grant rate" story, neither the FTC nor the NAS came to a conclusion, and other academics continue to tout Quillen's 85% number.]

See also "Patent Reform 2005: Sound and Fury Signifying What?", New Jersey Law Journal, IP Supplement, July 18, 2005.

The Schacht/Thomas report of July 15 suugested that oppositions have been implemented in the US to a limited extent. If you believe re-exams are a limited form of opposition, this is true. Otherwise, it is not true. Re-exams can be requested anytime during the life of a patent. The proposed opposition cannot be requested anytime. About 40% of re-exams are initiated by the patentee; this has no parallel with the proposed opposition.
[One notes that the assertion of more limited form on page CRS-38 does not have a footnote to identify which commentators believe reexams to be a limited form of opposition. Since the assertion isn't true, this absence is not surprising.]

Separately, from the paper by Graham, Hall, Harhoff, and Mowery:

US re-examination procedure differs dramatically from the EPO opposition procedure in virtually all of its features.
Comparison of US re-examinations and EPO oppositions must be treated with great caution.

[Separately, note that European oppositions do not resolve validity issues any more rapidly than do re-examinations.]

The assertion on CRS-39 of the Schacht/Thomas report that many observers have called for oppositions cites the NAS study (A patent system for the 21st century) but neglects to cite those who have opposed oppositions, such as Joseph Hosteny and Cecil Quillen. How is this Congressional Research Service report for the Library of Congress balanced? It ignores valid, published criticisms of oppositions and presents only the point of view of the advocates of oppositions.

Part of the solution in patent reform has got to be to give the PTO enough resources to conduct thorough examinations of patent applications. Right now, an examiner has 10-20 hours of time to investigate something that allegedly is novel (never done before) and nonobvious (never occurred to the skilled artisan to do it, with a reasonable chance of success).

For comparison consider the foam issue at NASA: A NASA engineer who works on tank safety issues said other areas of foam shedding from the Discovery's tank were even more troubling than the PAL ramp loss, especially a divot that popped from the vicinity of the left-hand bipod strut, the spot that shed the foam that brought down the Columbia.

"We worked the hell out of that," said the engineer, who was given anonymity because he said disclosure of his name would jeopardize his career. The loss of foam from that spot after so much work to correct the problem, he went on, proves that the problem is still far more complex than NASA understands. [from John Schwartz of NY Times, July 31]


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