Breath of Fresh Air

Anyone interested in the future of the US patent system should read the new Director's remarks here. To say that there is significant change in approach from the past is an understatement.

It is surprising that the innovation community was so easily lead astray from the idea that job creation and a successful economy are inextricably linked to a strong and predictable patent system that protects innovations that make a difference. Director Iancu's focus on changing the dialogue makes clear that he intends to right the ship. 

One interesting aspect of his speech hinted that he fully understands patent quality is not one-sided. Patent quality is not just about making sure that unpatentable claims do not issue into a patent.  Rather, one must be at least equally concerned (or maybe even more concerned) about patents that should issue being perpetually rejected. He noted that he wants the system to "effectively address invalid claims, but at the same time, we don't want to throw out the baby with the bathwater. The filters need to be appropriately set."

Hopefully setting filters appropriately means that something will be done regarding the relatively small minority of examiners who it seems purposefully manipulate the system hoping to wear down applicants. In recent years abusive behavior has increased significantly and seemingly gone on unchecked. It is not uncommon to have an Examiner repeatedly refuse entry of all claims for alleged amendments that result in all claims being drawn to un-elected matter.  While it is true that an Examiner can legitimately have such a situation, when examiners use this tactic repeatedly so at to simply avoid any examination the Applicant is left with little effective recourse. Examiners also have felt so embolden as to ignore petition decisions directing them to examiner restricted claims by simply re-issuing new restrictions repeatedly until the Applicant gives up. Again, the applicant has little recourse even when such abuses are clear since the Applicant still has to meet deadlines and must actively petition each such abuse. Still another problem is the re-opening of prosecution responsive to a strong appeal brief. We have discussed these issues extensively in prior posts.

While Examiners should not have their hands tied with over-regulation of their action, there needs to be a balance and the Office should better police examiner behavior - especially as they have such quality review information at their fingertips. Hopefully the new director will initiate some projects to hone in on problem areas where legitimate inventions are being lost because the applicant does not have the resources or time to engage in a decade long battle just to have a fair examination of their patent application.

On the other hand, there are many examiners who handle their exceedingly difficult job by administering not only a fair and reasonable examination, but by doing so with actual care and concern for the inventors, regardless of their entity size. Those examiners should be commended and distinguished for helping drive our economy and create jobs for the future.