The United States Patent and Trademark Office (USPTO) recently announced that it will be implementing a new system for measuring the quality of patent examination at the start of fiscal year 2011. This system is designed to provide a more comprehensive analysis of patent examination to better enable its participants to identify and follow its best practices. The new quality measurement procedures were developed by the USPTO in conjunction with the Patent Public Advisory Committee (PPAC), based largely on feedback from various entities, including individuals, law firms, corporations, intellectual property organizations, and government agencies.
The new system incorporates five additional metrics along with the two that are currently used to measure the quality of patent examination. The current system measures the quality of the action describing the final disposition of the application, either in an allowance or a final rejection, and the quality of actions taken during the course of examination. The new system additionally measures (1) the quality of the examiner’s initial search for prior art, (2) the use of best examination practices in the first action on the merits, (3) trends in compact and efficient examination as reflected in aggregate USPTO data, (4) the perceptions of applicants and practitioners as measured by surveys, and (5) the perceptions of examiners as measured by surveys.
First Things First
The new metrics focusing on the initial work of examiners appear to be an improvement over the current system for at least two reasons. First, they coincide with the USPTO’s new count system for examiner production levels. This count system was implemented in February 2010 and awards examiners more credit for their initial actions taken on applications relative to credit received for subsequent actions. The count system was designed to decrease redundancy in subsequent actions, encourage quicker resolution of issues with applications, and spur earlier identification of patentable subject matter. The newly added metrics should assess the effectiveness of this count system by determining compliance with the best practices associated with initial actions. Since examiners are receiving relatively more credit for first actions than for subsequent actions, it makes sense to keep closer tabs on their initial work. The effects of the new count system may also be analyzed by measuring the degree to which global USPTO data is indicative of compact prosecution.
A second improvement of the new metrics for examiners’ initial work is their linking of searches at the USPTO with the work product of other patent offices, such as the European Patent Office (EPO) and the Japan Patent Office (JPO). In evaluating examiners’ use of this work product, the initial search metric relies on two factors: the proper consideration of a search report from another office as well as examiners’ notation of searching other offices for actions taken on related cases. Work completed by other offices is a valuable resource to examiners in the U.S., and this metric should indicate how often examiners are taking advantage of this resource. This is especially important since one study has shown that examiners rarely rely on applicant-submitted art in making rejections.
The People Have Spoken…
The new metrics involving surveys will provide subjective perceptions of quality and should encourage the participation of the public and the examining corps in identifying the best practices of patent examination. The external quality survey addresses issues such as the availability and responsiveness of examiners to applicants’ requests as well as the overall examination quality. The internal quality survey addresses the effectiveness of tools and training available to examiners and the degree to which applicants facilitated high-quality examination.
The USPTO will report the results of each metric as well as aggregate data used in their calculations periodically on the agency’s website. The new quality measurement system does not attempt to alter patentability standards, nor is it used as the USPTO’s internal quality review of examiners. However, it should serve to better educate and enable participants in the patent process to comply with existing standards and improve the overall quality of patent examination.