Friday, March 12, 2010

PTO Reform Ideas - 02: Examining Patentable Subject Matter

At the February 26, 2010 Stanford Technology Law Review Symposium on PTO Reform Arti K. Rai, Administrator for External Affairs at the USPTO, and the Elvin R. Latty Professor of Law at Duke University, gave the Opening Remarks. Among other things, she summarized some ideas for internal reforms that the PTO is implementing.

One reform will give examiners more time and credit for EARLY evaluation of Patentable Subject Matter (35 USC 101). When Prof. Rai spoke about this, I was happy until the word "EARLY." Yes, give examiners more time and credit for doing their jobs. But please, NOT for an EARLY analysis of Patentable Subject Matter (PSM).

As I said in October 2009 in An Urgent Letter and Time Sensitive Proposal to David Kappos, as well as in my amicus brief to the Federal Circuit in In re Bilski, only claims IN CONDITION FOR ALLOWANCE should be analyzed for PSM.

A primary reason to defer PSM analysis is that many apparent PSM problems will disappear when claims are amended or abandoned in response to rejections based on prior art or lack of enablement. By postponing PSM analysis until the claims are allowable, both the PTO and the applicants will save time and money.

If PTO management doubts my efficiency / conservation of resources argument, it better collect some data. How many claims survive intact from application through allowance? Let us call this the allowed-without-amendment rate (AWOA), where both the numerator and the denominator are based on ONLY the claims submitted at filing.

Of course, that's not the total number of claims the PTO may have to examine before the case closes, because often additional claims are proposed during prosecution. The PTO should also know that statistic -- the number of claims at filing divided by the total number of claims considered, the inflation rate, as it were -- but I have never seen it reported. Since, however, the subject of the moment is early PSM analysis, the PTO can ignore all claims other than those submitted at filing, and perhaps should care most about the AWOA rate for independent claims.

Any AWOA rate will be hard for an ordinary person to calculate, but the PTO should be able to do it. The Index of Claims from the back of the file wrapper, nowadays available on PAIR in the Image File Wrapper (sometimes) in a document called Index of Claims (FWCLM) is the key.

The PTO should evaluate aggregate data as well as data for those classifications that have the highest rate of PSM rejections. (Does the PTO have data of PSM rejection rates by class? It needs that information, too.)

The AWOA percentage rate may show some dependence on other factors: the number of applications in the chain, the total number of proposed claims during the life of the application, the years of experience of the examiner, the calendar date of the notice of allowance, etc. Perhaps the PTO has a statistician who can do some serious regression analysis.

I do not know the percentage of claims submitted at filing that are allowed without amendment (whether independent claims only, or both independent and dependent), but I have my suspicions. It's not likely to be much higher than 10%, averaging over all applications, including those that are abandoned (in which case the rate is 0%).

If you are an experienced prosecutor, I would love to know your educated guess.

I propose to make a quick survey of 100 published applications that have Image File Wrappers and a final result. I’ll use a random number generator to select my sample. I should be able to obtain a ballpark estimate on how many claims survive intact to allowance as a percentage of claims originally filed. I'm curious about the average of the percentages for each application in the survey, as well as the average for all applications taken together, and also about how different those numbers may be if I consider only independent claims or all claims. More on the survey will appear in this blog.

Meanwhile, PTO management should reconsider the early-PSM initiative. I appreciate that the PTO's failure to moot Bilski v. Kappos while it had a chance to do so (see October 2009 Urgent Letter post mentioned above) complicates things. It is quite possible that the Supreme Court decision will mandate such early analysis. If that happens, the PTO should run to Congress for a repeal.

Of course, the PTO will need to be armed with the data I mentioned above, and its spokesperson must be someone who understands that, as the PTO’s own publicity states, the essence of a sensible and trustworthy patent system is that it compares each inventor's claims to the prior art. (See the PTO 2008 Annual Report, page 22, referenced as n.3 in the Urgent Letter.)

I also appreciate that the foolish rush to evaluate claims for PSM before they have been determined to be valid over the prior art goes back at least to the "threshold inquiry" language in In re Comiskey which in turn dates from a remark in Parker v. Flook. In my Urgent Letter, under the heading CLEARING UP THE "THRESHOLD INQUIRY" MISUNDERSTANDING, I addressed the posture of Flook and the lack of authority (or thought or analysis or understanding of the patent system) behind the Supreme Court's statement that PSM -- "what TYPE of discovery is sought to be patented" (emphasis mine -- "must precede" examination on the merits.

I won't go through it all again, but it is still true. Read Flook for yourself. Also think about how the purposes of a patent system are, or are not, served, by evaluating PSM without regard to whether or not the claims are enabled or read on the prior art.

Last rev 3/12/2010 9:20 pm

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