Tuesday, May 13, 2008

Congress Requests Answers From The USPTO; Rough Times Ahead?

"The ancient Romans had a tradition: whenever on of their engineers constructed an arch, as the capstone was hoisted into place, the engineer assumed accountability for his work in the most profound way possible: he stood under the arch."

-- Michael Armstrong
On April 29, Howard Berman, Chairman, Subcommittee on Courts, the Internet, and Intellectual Property shot off a letter to USPTO Director Jon Dudas, asking some rather pointed questions on USPTO management and practice. What is apparent from the letter is that someone (or some group) has gotten the ear of Congress and is publicly unleashing some pent-up grievances held by practitioners against the PTO.

Of course, there is no hellfire and brimstone in Berman's letter, but is is clear from the tone that something doesn't smell quite right to the Congressman (e.g., pointing out multiple PTO shortcomings, referring to "USPTO estimates" in quotations), and you can feel the sweat rolling off your brow if you imagine yourself being tasked with answering the questions posed.

Some of the highlights of the letter:
  • According to the recent GAO report titled "Hiring Efforts Are Not Sufficient to Reduce the Patent Application Backlog, " the GAO found that the USPTO cannot hire enough patent examiners to reduce patent pendency in the next five years. 1t seems, however, that this projection is based on estimates provided by the USPTO. . . . Please provide all data related to these "USPTO estimates, " including mathematical models, and underlying statistics and assumptions such as examiner retention and productivity. Under these same assumptions, hypothetically, how many patent examiners would have to be hired in the next five years in order to reduce the patent backlog?
  • After release of the above mentioned GAO report, the USPTO issued"a press release on October 4, 2007 that stated the USPTO would"review assumptions the agency uses to establish production goals for patent examiners." (See attachment 5). Then, before the Subcommittee, Director Dudas confirmed that the USPTO has begun to study patent examiner production goals. Please provide details on the methodology of the study and personnel conducting it. What is the current progress of the study and when can Congress expect the study to be completed? To what extent is the Patent Office Professional Organization and the Patent Public Advisory Committee involved in this study?
  • As evidence of greater quality, Director Dudas mentioned in his testimony that in 2000, 70% of all applications led to a patent while in the first quarter of2007, only 44% ofall applications led to a patent. How did the USPTO account in these statistics for Request for Continuing Examination (RCE) applications, continuation applications and the applications that had to be abandoned in order to file continuation applications?
Also a question from Representative Darrell Issa:
  • Examination on Request (or, as the USPTO called it, Deferred Examination) is used in many countries such as Canada and Japan. Under such a system, applications are not examined automatically, as in the U.S., but only upon a specific Request for Examination within a set time period, say 3 years. If no request is filed within that period, the application is deemed abandoned and is never examined. From experience of other patent offices, 10% to 40% of applications are never examined under Examination on Request systems, resulting in substantial workload reduction. This is due to applicants' voluntary abandonment of obsolete applications prior to the Request for Examination deadline. Under current USPTO practice, applications that become obsolete, but receive examination by the USPTO, are the worst investment the USPTO can make because their obsolescence means that the patents are unlikely to fetch any renewal fees.
  • Why did the USPTO reject such a method that has the potential to reduce its workload and increase efficiency?

Last, but not least, it appears that "RIM-Gate" continues to hound the PTO. From Berman's letter:
  • According to a Time article dated April 2, 2006, and supported by an email allegedly from James Toupin dated January 3, 2005, senior USPTO officials met with Research in Motion (RIM) CEO Jim Balsillie while a reexamination concerning patents owned by NTP and at issue in a lawsuit filed by NTP against RIM, was before the USPTO (See attachments 10 and 1I). Did this meeting take place? What was discussed at this meeting? What is the USPTO's policy concerning ex parte communications between senior USPTO officials and parties who have an interest in the outcome of proceedings before the Office? In what other instances, if any, did senior USPTO officials engage in similar ex parte communications with parties that had an interest in the outcome ofa proceeding being conduct before the Office?
For more information, see Patently-O (link), and also take a good look at NTP's April 2006 response during reexamination (hint: start at page 74), where many of the juicy bits are displayed for the public.

Download a copy of Berman's letter here (link)

1 Comentário:

David said...

A number of the other questions in the Berman letter are just as damning, reflecting suspicions of withholding or spoliation of evidence in the Tafas/GSK v Dudas litigation.

In the documents produced by the PTO in the litigation, the PTO "omitted" all studies of economic effect on the public, except raw paperwork numbers. The PTO never asked what the economic effect would be of the loss of patent protection and the cost of additional inequitable conduct litigation that would be occasioned by the continuation and claims rules.

And the history of the PTO's filings under the Paperwork Reduction Act suggest that even the paperwork estimates were "jimmied" to get to a politically-acceptable number, not a bona fide good faith estimate of paperwork costs.

The PTO's course of telling less than the whole truth are outlined at

It's clear that the PTO broke the law, either (a) by failing to do the economic analysis required by a number of laws, (b) did the analysis and destroyed the documents before the would have had to be produced in the Tafas/GSK litigation, or (c) had the documents and withheld them.

It looks like Congress is now on to the PTO's pattern of cooking the books, and is now demanding that the PTO produce its underlying data and models. We'll see if there is any underlying data or models to produce, or whether the whole rulemaking was based on total fiction.


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