Six Easy Suggestions for Improving Patent Office Transparency

For a government agency, the USPTO (PTO) is fairly transparent to non-parties hoping to learn about the patent system and about specific patent cases. The PTO website receives millions of visits to access patents, published patent applications documents, and prosecution history files. In promoting the new rule changes, the PTO also offered up a number of metrics to prove its case. While that information was useful, its reliability was generally impossible to independently verify because the underlying data was not publicly available. The truth is that the PTO still has a long way to go before we can consider it a transparent operation.

Why this is important: Part of the need for more information involves public accountability so that we can ensure that the PTO is efficiently and accurately carrying out its role in the patent system. Independent verification is especially important now when various factions (including the PTO's own lobbying arms) are calling for various reforms of patent laws and the rules of patent procedure. However, the call for transparency at the PTO is at least equally focused on the business need of understanding how the patent system works and how competitors are using the patent system.

I have created a short list of "easy" suggestions for improving transparency at the Patent Office. I call it an easy list, because these steps really just involve taking information that is already at the fingertips of PTO insiders and making the information accessible to those on the outside. Following these steps may be a quick and easy way for career office officials to quickly win favor with the new Obama administration.

1. Make petitions decisions available. Challenges to certain decisions by patent examiners and PTO officers go through a petition process to the Commissioner of Patents rather than through the Board of Patent Appeals and Interferences (BPAI). These cases include disputes involving revival, patent term extension, patent term adjustment, patent term restoration, reexamination petitions, petitions involving filing dates, petitions involving disclaimer of scope, refund petitions. Since January 1, 2005, the PTO has not posted any petitions decisions to its website. Thus - unless a party knows the specific case number and obtains it through the Image File Wrapper in the Patent Application Information Retrieval (PAIR) system - the petitions are inaccessible. Conventional wisdom is that petitions practice can be something of a black hole -- unless the PTO decides to act quickly. This is only conventional wisdom, because the actual practice of the office is hidden. It would be an easy change to start publishing all petitions decisions as they are released in once convenient location on the PTO website.
2. Make public PAIR information available for automated download -- either through the PTO website or through a third party willing to make the information publicly available. The PAIR system is amazing in the information that it provides. However, it is clunky and wastes a tremendous amount of time to access each individual case. File history information is important because claim construction decisions now rely on that information in interpreting the claims. In addition, file histories are an important source of prior art - especially in the way that the documents can provide contextual information on how different elements may fit together. Yet, PAIR is not generally searchable and data cannot be obtained in any bulk way. This must change. I will be more than willing to work with PTO to and others to create a system that works. Although I am not wedded to this approach, I would favor a system that embraces the possibility that individuals and companies will take-hold of the data stream and use it in creative ways.
3. Publish the standard metrics used by PTO executives to measure the process flow and quality. Of course, this should be done in a way that maintains some semblance of privacy for PTO employees, but I doubt that the executive-level charts include specific names of the 6,000 examiners. Of course, I don't know because these items are not publicly available.
4. Allow search engines to crawl through the PTO web-servers. Matt Buchanan wrote an interesting post on President Obama's new ROBOT.TXT file for the whitehouse.gov website. [LINK] Obama has apparently opened the site to allow it to be crawled by any search engine. The PTO should follow suit so that documents posted to the website can be found through Google, Yahoo, CURL, Alexa, etc. Remember, the touchstone of publication is whether it is accessible to the public. Many documents on the USPTO.gov website are worthless because they are too difficult to find through the locked-down search procedures available on the current website. This is an extremely easy change. It took the White House a few minutes to make the change, the PTO could be done in the same way. Kudos to the PTO -- After I wrote a first post on this issue, two PTO officials contacted me to indicate that they were working on resolving the issue.
5. Use PDF format to allow download of patents and patent applications in their "Standard" form. This would be a bonus, but it is not required since there are low coast ways to obtain this result through an outside vendor. One problem with using an outside source, however, is the possibility that search information may be stored and used against the searcher at some point.
6. Openly respond and post all responses to freedom of information act (FOIA) requests on the PTO website. The PTO has created a FOIA website that is hardly searchable. And, most FOIA documents are not placed on the FOIA website. Any response to a FOIA request should be automatically and immediately uploaded to the FOIA website so that it is accessible to the public at large rather than to only the one person who requested the information. As a teacher, I have learned that if one person asks a question, it is likely that other folks had the same question. In most cases, the PTO could upload the documents and save mailing costs by simply providing a link. President Obama has ordered all executive agencies to "adopt a presumption in favor" of FOIA requests, and this change would fall in line with the spirit of that request.

I have eliminated other potential projects and changes that might be considered "hard" for the PTO to complete. These are easy and should be done. This is a draft of ideas -- add yours below. Also, please let me know if there is already a good way to access the information that I discussed above.

Comments

[Malcolm Mooney]

"President Obama has ordered all executive agencies to "adopt a presumption in favor" of FOIA requests, and this change would fall in line with the spirit of that request."

I actually teared up a little when I read this.

Great suggestions, all around.

[Tazistan Jen]

Your search idea alone would be a major improvement.

[Rick Galati]

These are great suggestions. How do we get this on the desk of the White House, Dennis?

[outsourcing sometimes is good]

How many $ were spent to develop the PTO's broken website search engine?

Wouldn't it be simpler and more effective - for examiners and for applicants - to just dump the robots.txt?

[David Boundy]

Here's another one that is both easy and an absolute legal obligation of the PTO - the PTO should implement Executive Order 12,866 and an order from the Executive Office of the President to all agencies -

http://www.sba.gov/advo/laws/eo12866.pdf *

http://www.whitehouse.gov/omb/assets/omb/fedreg/2007/012507_good_guidance.pdf

These would go a long way toward transparency, predictability and efficiency. They make clear which PTO statements are "rules" binding against applicants, and which PTO statements are unilaterally binding against the PTO itself, but not against applicants. They also clarify that the PTO is obligated to enforce its internal self-regulatory rules.

* The OMB web page indicates that Executive Order 12866 remains in effect, http://www.whitehouse.gov/omb/omb/inforeg_regmatters/ but the link to the document itself is broken. The copy at Small Business Admin looks like a true copy of the OMB doc.

I have personally discussed these two presidential orders with John Love, the single PTO official most responsible for implementing it. He stated he's never bothered to take the time to read them, and judging by the PTO's web site, even though they'v been in effect two years, the PTO continues to ignore the President.

The PTO cannot possibly function as intended if its chief policy officer can't even bother to inform himself of his duties or give enough of a ---- to carry out the President's instructions to him! It also can't possibly be good PR for the PTO to continue to break the law by simply ignoring laws it finds inconvenient.

Notably, Tuesday at noon when the Bush WhiteHouse.gov website went down and the Obama web site went up, these two Executive controls over agencies remained in place - if these two docs are important to two presidents, why can't the PTO implement them?

So what's up John Love, Jim Toupin, John Doll? You took oaths to see that the laws would be faithfully executed - all the laws, not to pick and choose. What's up?

[anonymous]

Remember the old saying "be careful what you wish for". Remember the last time the lawyers and the PTO management "come together in unity" to address "quality issues". What come next was TQAS, "second pair of eyes", etc. forcing thousands of experienced examiners to resign. We are still trying to get out of that mess.

[Guy]

Great suggestions Dennis!

I think the suggestions (definitely non-partisan, fair, and non-protectionist, if you ask me), if implemented, will go leaps toward improving the system (especially transparency on PAIR).

[curious]

I just don't want the PTO and/or Congress monkeying with patent laws and rules. KSR and Bilski and the availability of reexam will slowly take care of bad patent problems (and I don't think that bad patents are any more of a problem than they were 25 years ago).

What needs to be changed is management -- management needs to have patent prosecution experience and be able to listen to us.

[patent leather]

@David Boundy:

Sec. 11. Judicial Review. Nothing in this Executive order shall affect any otherwise available judicial review of agency action. This Executive order is intended only to improve the internal management of the Federal Government and does not create any right or benefit, substantive or procedural, enforceable at law or equity by a party against the United States, its agencies or instrumentalities, its officers or employees, or any other person.

So what good is the executive order if it isn't enforceable? Is there any way to force compliance?

[P Tission]

Does anybody out there have any thoughts whether a Utility Model type application would be a "good thing" if ever introduced in the US? The Germans, Japanese, Australians etc appear to benefit from this system.

[Michael F. Martin]

These easy suggestions are great.

But what really gets me excited is thinking about the harder ones. Someday, every Examiner and Inventor should have their own profile page on the PTO website. The PTO could become social network for inventors to publish, protect, and market their work to the public.

[Borris]

I would like to see the Appeals Board moved to a more appellate/adversarial position.

Once you file your NoA the case is removed from the Examiner's control and to an Appeals Clerk.
The Appeals Clerk checks for procedural compliance (i.e., non-compliant briefs, etc.) and neither you nor the Examiner would be able to remove the case from Appeal w/o making a motion to the Appeal Board (which the other party could contest).

I'd even move the Board across town so there is less fraternization between the Examiner Corp and the Board.

There are too many shenanigans with Examiners trying to hide their poor work and frustrate a final decision by repeatedly issuing non-compliance letters followed by new (and wackier) grounds of rejection.
Win or Lose if I am going to Appeal I want a final decision.
And I say this knowing that the Board often rejects the patent.

[Borris]

I would also like to see some type of tolling function for extensions, etc. when a Petition is made.
Often a Petition becomes moot because the PTO just fails to respond to it, and you have to proceed with the defective OA (or whatever) without a response to your Petition.

I haven't worked out any real mechanics for this, but there needs to be some penalty for the PTO if they simply ignore their own rules or "pocket veto" petitions/advisory actions/pre-appeal briefs, etc.
The PTO is just non-responsive.

[Steve Zweig]

I'd like to ask the USPTO to remove the Captcha function from public PAIR. It gets really irritating quite fast. If the system slows down, install some additional servers.

[AllSeeingEye]

"Yet, PAIR is not generally searchable and data cannot be obtained in any bulk way. This must change."

Nice thought, but if you consider how long it took for even something fairly straightforward like patent documents to become searchable it doesn't look promising. The PTO probably has their hands full with their primary job - examining patent applications.

Further, since non-published applications are still considered to be confidential, there is a security risk to allowing willy-nilly indexing of uspto.gov for Google/public access.

And publishing all petition decisions probably will have the unintended consequence of encouraging more petitions, which I doubt the PTO wants.

Incidentally, is your spell checker broken?

[AllSeeingEye]

Not to be a squirrel at the cotillion, but there is a difference between "publication" and "available to the public." I know of no requirement to "publish" file histories - including petitions.

[AllSeeingEye]

When you peel the layers off of the onion, it all boils down to the emergence of socialism in America (of all places). Read the article by Dick Morris (hardly a right-wing looney)

http://tinyurl.com/8rp8h3

For some unknown reason there are people that actually seem to like the idea... But it is NOT good for the U.S. entrepreneurial engine.

Mooney like the idea, because he hates to see people filing patents and driving nice cars.

[JohnG]

President Obama has control of the marines, right? Can't he use them for good instead of evil and destroy that place? We will rebuild!

[Mark Nowotarski]

"I will be more than willing to work with PTO to and others to create a system that works"

Me too.

[PABC guy]

I have a small suggestion for increased transparency. I think the Pre-Appeal Brief Conference Decision should be a short (like, 1-2 paragraph) written opinion, instead of just a check-box form. I have no idea what goes on in that conference or if the conferees even considered or understood my arguments. I have no way to improve my PABC Request arguments without knowing what the conferees are looking for or what their reasoning is.

Although not strictly a transparency measure, I would also change the PABC standard for proceed to BPAI from "at least one issue remains for appeal" to "no rejection should be reconsidered before appeal." That way, only solid rejections would go up on appeal, not a laundry-list of rejections (typically 112s) where only one is colorable.

[PhilS]

In my opinion, transparency is not in the top 10 priorities to improve the USPTO.

[6]

" think the Pre-Appeal Brief Conference Decision should be a short (like, 1-2 paragraph) written opinion, instead of just a check-box form. I have no idea what goes on in that conference or if the conferees even considered or understood my arguments. "

You have a phone on your desk amirite? Use it. Also, the whole point to a pre-appeal is to be a quickie appeal with a specialist present. If you want the whole shebang then you get to pay and wait for it k?

"That way, only solid rejections would go up on appeal, not a laundry-list of rejections (typically 112s) where only one is colorable."

You seem to believe that you're appealing something other than the decision of the examiner. Be clear, you're not appealing individual rejections. You're appealing the the overall decision not to allow the case. That can be the result of a laundry list or not.

But, tell you what, I'll trade you that for you filing only one claim rather than whole laundry list of claims. K? How's that sound? Until you want to make a deal what say we both just do as the statute commands?

[David Boundy]

Borris, please contact me. DBoundy [at] Cantor [dot] kom.

Patent Leather: Correct, no direct judicial review. But OMB recently let the PTO know what happens to requests from PTO when PTO ignores requests from OMB. (See big grin on Boundy.) Also, courts have been willing to use similar "no judicial review" statutes and rules as benchmarks for evaluating when agency action is "arbitrary and capricious."

[Noise above Law]

"what say we both just do as the statute commands?"

if only, 6, if only.

[Patent_Medicine]

How about this for a revolutionary idea: How about putting up the expiration date of each patent?

As it stands now, only a lawyer can figure that out, and many of them can't. And for the older cases, it can't be determined with any accuracy unless the file history is ordered. The older files aren't available by PAIR, and the transaction histories often contain errors (like not listing terminal disclaimers). The front of the issued patents don't even state reliably if there's a TD in there.

The PTO keeps putting out new rules with the justification of making it easier for the lay public to understand the scope of patents. But a "little" thing like the expiration date has fallen completely by the wayside.

[ernest grumbles]

Dennis - great suggestions. Would be awesome if PTO would play ball like this. C'mon Obama, you can do it.

[Daedalus]

There's an easier way to do 2. -> Eliminate file wrapper estoppel/interpretation. No other jurisdiction has it, so why do we need it?

PS: I'm aware of the reason behind it, but there's a far easier way to limit claims to certain interpretations. You have one guess.

[hp684]

anyone that used partridge (and thus instantly became totally dependent upon it) before the USPTO summarily ripped out the interface hooks, knows how valuable ready access to pair data is.

[Just an ordinary inventor(TM)]

Dear Daedalus,

So bad Judges can tank any patent at will?

[Just an ordinary inventor(TM)]

bad = doesn't take the Oath of Office to heart.

[Just an ordinary inventor(TM)]

Especially after Phillips v AWH, the claim should speak for itself as supported by the spec and Figures.

The Examiner should require that every clear, unmistakable and unambiguous disclaimer be reflected in the claim.

If a disclaimer ain’t in the claim, it does not exist.

[Just an ordinary inventor(TM)]

At least that’s the what our patent statutes dictate.

“If a disclaimer ain’t in the claim, it does not exist.”

However, “Go tell it to the Judge” and see where that gets you.

[Daedalus]

"If a disclaimer ain’t in the claim, it does not exist."

Bingo. Perhaps we can dare to hope to join the rest of the world within a decade.

[Failed to understand premise]

"You have a phone on your desk amirite? Use it. Also, the whole point to a pre-appeal is to be a quickie appeal with a specialist present. If you want the whole shebang then you get to pay and wait for it k?"

6 - this is the exact opposite of transparency. One person calling (and bothering) a SPRE or QAS does not let everyone see what's going on in the PABC process.

[Bob the patent guy]

The Office's determinations of "patent error rates" seem to be entirely contrived. We need to have an external group doing this review, or there will never be any reality involved in the process.

[Michael Sykuta]

The Contracting and Organizations Research Institute at the University of Missouri (http://cori.missouri.edu) started doing something similar to what you describe with contracts contained in SEC filings, well before Lexis/Nexis and EdgarOnline were offering and parsing out the attachments from filings. CORI continues to make available--for free--almost 700,000 contract documents over the web through full-text queries as well as by industry (SIC classification) and contract/transaction type.

I'm not familiar with the structure of the PTO's directory structures, but CORI could likely adapt its current technology to automate the collection, organization, and distribution of PTO records if there was funding to support the effort.

[Brian L.]

Since the head guy at Google is a key technology adviser for Google, I'm hoping that in the near future Google will have the entirety of the public PAIR system mirrored on their servers...

[6 understands all premises, especially this one]

"6 - this is the exact opposite of transparency. One person calling (and bothering) a SPRE or QAS does not let everyone see what's going on in the PABC process."

My point was that his reasoning did not support a call for the preappeal system to become transparent. There is no reason for it to be, that is not what it is there for. That is what appeals are there for.

And just fyi, I recommend calling the examiner, not the spre. Though personally I recommend calling the examiner before you send in your bs answer the first time rather than after you've wasted my time with a pre-appeal. So far nobody has won on any grounds that they probably couldn't have just convinced me of over the phone and I'm about to rack up two ez kills this month. Ez kills = my time wasted.

[AllSeeingEye]

Most of the "problems" are contrived. And most of the proposals for "reform" are solutions looking for a problem. All of it is an effort to gen up excuses for gratuitous intermeddling to advance the agenda of one group (large corporate interests) over that of another (entrepreneurs).

Its no secret that companies like Microsoft are ersatz monopolies anyway. When companies reach monopoly stature, they spend their monopoly surplus erecting barriers to entry (such as by vigorously promoting patent "reform").

Any idi0t who took Econ 101 should know this. Of course I don't expect Mooney to know it. And if he does, all of his chickensht talk about playgrounds and stuff really are just about curioulsy promoting some other agenda.

[Michael R. Thomas www.worldsonlyinventorofsignificancearguably.com]

Transperancy in the patent office is not ethical in many instances because of the secreative nature of intellectual property one of the method of evidencing is the fact that the opposition doesent know what the invention is therefor they couldent be the inventor.

[toaster001]

Comments may be sent directly to the Whitehouse and to Obama's advisors:

http://www.whitehouse.gov/contact/

http://my.barackobama.com/page/invite/neworganization

[Kevin Webb]

I had the opportunity to talk with the patent commissioner, John Doll, as well as some of the top legal counsel for the PTO about this topic in 2005 and learned that there was strong support for increased transparency within the organization. However, their position at that time was that private sector interests would block open access initiatives. Organizations like Thompson and Elsiver were making tremendous sums providing access to this data and were exerting pressure on the USPTO to prevent increased access through free interfaces.

My questioning at that time related primarily to search interfaces on patent and application data - I’m not sure if the same economic argument applies to wrapper data generated during the decision making process. In recent months this data has actually become less accessible via the PTO, reportedly for technical reasons. But to my knowledge this data is not available through any private sector provider.

Regardless, I’m glad to see that Doll is now serving as acting director for the PTO and as the Under Secretary of Commerce for IP. I’ve appreciated his candor and consideration of these issues in the past and hope that he will continue to advocate for increased transparency and data access under the new administration.

[huh???]

Huh (wtf) ???: http://www.worldsonlyinventorofsignificancearguably.com/

[WTF II]

"http://www.worldsonlyinventorofsignificancearguably.com/"

The next Patently-O.

Bravo Michael R., Bravo.