Patent Fees and Counts and the Standard Application Metric - PTO Reform Ideas 03

Both the fee structure and the examiner count system should be based, not on the unit of the filed application, but instead on a metric that compares the actual application to a standard application.   The comparison would be based on such parameters as numbers of:  specification columns in standard format, figures and reference characters in the figures, independent and total claims, and IDS references and the sum of the individual references' pages (or word counts, figures, etc.). 

This way fees and counts would be appropriately tailored to the complexity of the task of examination.  Today's one size fits all system prevents such tailoring.  (Excess claim and page fees do not address complexity adequately and may not affect the count system at all.)

Patent prosecution professionals know that the more complex the case the more time is needed to do a proper job, and their fees, whether by the hour or by prearrangement, reflect this.  R&D expenditures are also related to the complexity of the technology, as are the pay scales in different fields.  Likewise, revenues from commercialization are often proportional to complexity because the price per unit, the margins and the volume of sales are often higher for more complicated and sophisticated technology.

Why do PTO fees and examiner counts essentially ignore complexity?  Answer:  "Because they always have."  That answer is not good enough any more.

Employing a standard-application metric (SAM) for the count system and fee structure acknowledges the reality that all applications are NOT created equal.  Examiners can be given twice the time to examine an application that is twice as complex.  This means that they will have enough time to understand complex technology, read a lengthy specification, consider voluminous information disclosures, and examine numerous, highly nuanced claims.  The system will also encourage applicants interested in cheaper and faster examination to be more succinct and direct.

Who will devise this metric?  Answer:  The PTO.  Director Kapos, and management, and the examining corps, all know what the measurables of patent applications are and how those measurables affect examination time.   

The public, too, can consider the definition of the standard application.  Publicly available databases and the PTO's $200 DVD of patent statistics are helpful.  For example, the CLAIMS.TXT data on the DVD permits calculation of the median, mid 50%ile and average for three aspects of complexity of issued patents:  numbers of claims, figures and drawing sheets.   Unfortunately, the number of specification columns and IDS references -- useful information for our SAM -- are not as easily found, nor are data for applications as opposed to issued patents.  That information can be compiled without too much difficulty, however.

To begin working toward the SAM solution, I have looked at some numbers.  For simplicity and speed,* I have segregated out two groups of ~1000 patents from the DVD, representing past and current complexity levels:

     For the 1000 patents numbered 3,999,000 to 3,999,999, issued in 1976:

          Claims: median 8, mid50 4 to 12, average 9.2,

          Figures: median 5, mid50 3 to 9, average 6.9, and

          Drawing Sheets: median 2, mid50 1 to 3, average 2.8.

     For the 990 patents numbered 6,999,000 to 6,999,999 (ten patents were withdrawn prior to issuance), issued about thirty years later in 2006:

          Claims:  median 15, mid50 9 to 21, average 19.6,

          Figures:  median 8, mid50 5 to 13, average 13.3, and

          Drawing Sheets:  median 6, mid50 4 to 9, average 9.5.

It is undeniable that serious thought and hard work will be needed to determine

     (1) the parameters to use,

     (2) the standard application values,

     (3) the weights to apply to those parameters, and

     (4) the structure -- linear?  step function with how many steps? -- by which to calculate the fees and counts for actual applications compared to the standard.

Consideration should also be given to how often the definition of the standard application should be adjusted.  It might be when the median actual application goes above 1.5 SAMs, for example.

The PTO can do this.  And should.  And the time to do it -- while Microsoft v. i4i is pending before the Supreme Court, patent reform legislation is before Congress, and public attention is being given to the quality of examination and in particular to the problem of inadequate examination time and resources -- is now.

//

 

* I used batches of 1000 patent numbers rather than a larger or more random sample.  Consecutive patents, all issued on the same date or a week apart, may all have been granted by a small subset of examiners or art units and thus may not necessarily represent the whole.

Mark Twain on Patents and Inventions

On September 14, 2009, David Kappos, new Director of the United States Patent and Trademark Office, spoke at the annual conference of  Intellectual Property Owners Association ("IPO"). See
http://www.uspto.gov/main/homepagenews/2009sep14_kappos_ipo_speech.htm. In his conclusion, he quoted from Mark Twain's A Connecticut Yankee in King Arthur's Court:

“A country without a patent office and good patent laws is just a crab and can’t travel anyway but sideways or backwards.”

When that quote first came to my attention back in December 2001
(It was on the USPTO homepage.  Perhaps that's where Kappos first saw it, too? Or maybe Kappos himself sent it to the USPTO?)
I grabbed my copy of The Autobiography of Mark Twain by Samuel Clemens (New York 1959, original copyright 1917), to look for references to patents.  Sure enough, chapter 45 was right on point. Here is my slightly abridged transcription:

"An old and particular friend of mine unloaded a patent on me, price fifteen thousand dollars. It was worthless and he had been losing money on it a year or two, but I did not know those particulars because he neglected to mention them. He said that if I would buy the patent he would do the manufacturing and selling for me. So I took him up. Then began a cash outgo of five hundred dollars a month. ....

"At last, when I had lost forty-two thousand dollars on that patent I gave it away to a man whom I had long detested and whose family I desired to ruin. Then I looked around for other adventures. That same friend was ready with another patent. I spent ten thousand dollar in eight months. Then I tried to give that patent to the man whose family I was after. He was very grateful but he was also experienced by this time and was getting suspicious of benefactors. He wouldn't take it and I had to let it lapse.

"Meanwhile, another old friend arrived with a wonderful invention. ...

"Finally, when I had spent five thousand on this enterprise the machine was finished, but it wouldn't go. .... I took some stock in a Hartford company which proposed to make and sell and revolutionize everything with a new kind of steam pulley. The steam pulley pulled thirty-two thousand dollars out of my pocket in sixteen months, then went to pieces and I was alone in the world again, without an occupation.

"But I found one. I invented a scrapbook -- and if I do say it myself, it was the only rational scrapbook the world has ever seen. I patented it and put it in the hands of that old particular friend of mine who had originally interested me in patents and he made a good deal of money out of it. ...

[Another speculation -- not involving a patent this time -- leaves Twain out by $23,000, but ultimately he is repaid. This amount is in the check in his pocket in the next paragraph.]

"... General Hawley sent for me to come to the Courant office. I went there with my check in my pocket. There was a young fellow there [who] was with Graham Bell and was agent for a new invention called the telephone. He believed there was great fortune in store for it and wanted me to take some stock. I declined. I said I didn't want anything more to do with wildcat speculation. Then he offered the stock to me at twenty-five. I said I didn't want it at any price. [The price kept coming down until the man] said I could have a whole hatful for five hundred dollars. But I was the burnt child and I resisted all these temptations, resisted them easily, went off with my check intact, and next day lent five thousand of it on an unendorsed note to my friend who was going to go bankrupt three days later.

"About the end of the year (or possibly in the beginning of 1878) I put up a telephone wire from my house down to the Courant office, the only telephone wire in town and the first one that was ever used in a private house in the world. {emphasis Twain's}

"The young man couldn't sell me any stock but he sold a few hatfuls of it to an old dry-goods clerk in Hartford for five thousand dollars. That was that clerk's whole fortune. He had been half a lifetime saving it. It is strange how foolish people can be and what ruinous risks they can take....

"We sailed for Europe on the 10th of April, 1878. We were gone fourteen months and when we got back one of the first things we saw was that clerk driving around in a sumptuous barouche with liveried servants all over it -- and his telephone stock was emptying greenbacks into his premises at such a rate that he had to handle them with a shovel. It is strange the way the ignorant and inexperienced so often and so undeservedly succeed when the informed and the experienced fail."

Notes

US Patent No. 140,245, "Improvement in Scrap-books," was issued to Samuel L. Clemens on June 24, 1873.