Friday food for thought: Reform this!
I’ve had a lot of fun over the last several years talking to patent attorneys, inventors, and business folks about the patent reform issue in the United States. I’ve had intriguing conversations with colleagues, friends and adversaries alike. The best discussions usually start something like this: “Yeah…the changes would be a big deal. Hey…I’ve got an idea…they should do this…..”
I’ve heard ideas that range from the well-thought-out, practical approach to a specific problem, to the academically-interesting-but-not-so-practical approach (think maintenance fees based on economic impact of a patent), to the downright wacky.
I thought I’d share a couple of my favorites. One is serious, and one is wacky. I think they’re both great ideas.
Try this on for practicality - why doesn’t the Patent and Trademark Office build regional offices in strategic locations around the country that would allow it to build the examining corps by tapping local, specialized talent for particular technology areas. Detroit seems a logical place for an Office that specializes in mechanical and electrical engineering (and, um, I’m guessing there’s going to be a few talented automotive engineers looking for new careers over the next several years). A computer/software shop could be established in northern California (could the PTO compete in this labor market?) and a biotech/pharma Office could be set up in Boston or New Jersey. The whole network could be backed by a computer/software system that allows any Examiner in any location to work on any application. I’m betting that a private company faced with the specialized labor demands and turnover rates experienced by the Office would have done this years ago….
And now the wacky…..I’m always glad to hear people thinking of new approaches, but come on! Examiner house calls? Yes…someone once suggested to me that the Office should “dispatch” an Examiner to the inventor’s home (or company) when examination is first initiated. I dismissed this at first (as wacky), but grew to like it the more I thought about it. This idea has real genius behind it - a short period of intense prosecution where both sides can focus on an application (or a family of related applications) for a brief period of time. The current prosecution process is incredibly inefficient…taking several years to accomplish only several hours of actual work. Using the housecall idea, the whole process could be compressed into a single span of intense work. Think about it. If an Examiner asked you to come to the Office (Examiners travelling just won’t work; we’ll have to make the “housecalls”) for “a couple days of intense prosecution” on a family of applications….would you do it? You’d discuss the applications, the art, amendments (if necessary) and any other matters directly with the Examiner, and both of you would focus solely on the applications at hand. You could break at times to talk in confidence with your client and the Examiner could leave to update searches, talk with other Examiners, etc. At the end of a couple days, you might just walk away with a Notice of Allowance, or two, or three. Prosecution could be wrapped up weeks after the Examiner first opened the file, instead of years later…..
Advice given to me years ago by a senior attorney seems appropriate: “If you can’t embrace the wacky ideas, you’ll never make it as a patent attorney.”
If you enjoyed this post, please consider to leave a comment or subscribe to the feed and get future articles delivered to your feed reader.
Comments
Thanks for the comment Max (can I call ya Max? 
).
I agree…the Examiner visiting the applicant in some circumstances is not that wacky. US Examiners make trips similar to the ones you describe…they aren’t focused on individual cases, but rather on a technology in general. These “training sessions” occur more frequently in the biotechnology and medical device fields, but aren’t unheard of in other areas. Unfortunately, the ability of the Office to allow Examiner to take such trips is frequently tied into the budgeting process, and it becomes difficult to determine if such trips are permitted in any given year.
The “wackiness” of that idea lies in that which doesn’t currently happen (either in the US or in Europe, apparently) — a focus on an individual case or related series of cases. It’s the concept of “intense prosecution” that is a bit wacky…and a bit genius.
As for branch offices…I’d have to answer your question with a ‘maybe.’ I’ve seen law firms use branch offices in very different ways…with very different results. I don’t think efficiency can ever increase with a branch office setup, but the decrease due to the setup could certainly be minimized. More importantly, though, I don’t think the idea of branch offices is focused solely on efficiency gains. The core of that idea is to allow the Office to tap specialized local labor markets for qualified Examiners. Surely a gain in quality would be realized when better-trained Examiners are on the case.
I really think that both of these ideas are worth exploring.
Thanks again for the comment.
Call me Max, by all means. Should I address you as Matt?
As to Examiner visits, I would be concerned about transparency. EPO Exrs are discouraged from acceding to personal interviews, face to face or telephone, for the good reason that third parties perusing the prosecution record find it frustrating to guess what turned the opinion of the Exr. I like to see the written record, and so does everybody else (except Applicant). I note that personal interviews are a common feature of USPTO prosecution, and don’t care for it. I like the EPO system better. Three Exrs have to sign off, and they mostly come from different countries. That promotes consistency, an aspect of quality.
As for branch offices, the EPO has them too. In the context of the EPO it works well enough because, in Europe’s civil law landscape, everybody appeals and then fact-finding starts anew, and all the 21 Technical Boards of Appeal are in one building, here in Munich. That imposes a degree of consistency, and quality. Conversely, consistency and quality within the 31 national Patent Offices of the Member States of the EPC, all administering the same Statute, might not be so easy to find and verify. Your idea of USPTO branch offices could work super, especially if 1)measures are in place to stop each branch office “going native” and 2) Exrs are often called upon (as they are in the EPO) to balance the petitions of the Opponent with those of the Inventor, so that they learn to give reasonable legal certainty to the public and at the same time fair protection to the inventor. Then they will not get into the habit of favouring the “local” Applicant community.
I am interested in the notion of US Examiner training session visits to applicants, I was not aware that there is such a system. Do you know if there is some sort of procedure for setting something like that up? Do you set it up with an individual examiner, or do you go through some sort of clearinghouse process with the Office?
Comment from Europe: PTO Exrs visiting the Applicant? Not that wacky. EPO Exrs like to visit Applicant companies, to learn. There are several US medical device companies I know, that can attest to that. Admittedly, on such visits they don’t discuss individual cases, but they sure help the PTO objectives of quality and efficiency.
Branch offices(of the USPTO)? Now that really would be wacky! Look at most patent law firms that run branch offices. Does it raise efficiency and quality? You tell me.