Joff Wild

PatentlyO, the Patent Prospector and Peter Zura’s 271 blog are among those reporting on a letter sent by Congressman Howard Berman, chairman of the House of Representative’s Sub-committee on Courts, the Internet and Intellectual Property, to USPTO Director Jon Dudas.

The letter is primarily composed of a series of detailed questions. These give every impression that Berman and his colleagues believe that Dudas and the senior management at the office have not been entirely straight when talking about a number of issues. Subjects covered include examiner retention, how the size of the USPTO backlog will grow and alleged secret meetings with representatives from RIM concerning the re-examination of patents owned by NTP relating to the famous Blackberry litigation..

It is worth mentioning here, I think, that Berman was (and presumably is) a prominent supporter of the Patent Reform Act. This is a piece of legislation that the US government, of which Dudas, of course, is a member, has probably played no small part in holding up due to its trenchant opposition to changes the Act proposes to the way damages are calculated. Also quite strange to my eyes is that although the letter is written specifically to Dudas, several of the questions use the term “you” within them (numbers 1, 9 and 10, for example), while others (eg, 7, 8, 11, 14, 15) refer to the director in the third person. I wonder if some of the questions were penned by a third party and merely inserted into the letter without any edit being applied. If so, it would be interesting to know who that third party was.

However, that is by the by. Clearly the letter raises a number of serious issues and it is important that Dudas responds fully and unambiguously to each one within the time limit that Berman sets, which is by 19th May.

It seems that underpinning a number of the questions is an assumption that is widely shared among US patent owners and patent attorneys: namely that many of the problems which the USPTO identifies and holds responsible for the growth of the backlog are overly exaggerated to hide office failings, and that if the office were better at retaining examiners and managing the prosecution process, there would not be any serious pendency issues and perceived problems with patent quality would not exist. In other words, if the USPTO is in trouble it is all trouble of the USPTO’s making and has nothing to do with the users of the office.

Seeing things in that way, of course, absolves patent owners and their representatives from any kind of self-examination and gives them carte blanche to carry on pursuing business as usual. This may be one of the reasons why some of them are so keen on someone who has worked in patents for a long time take over from Dudas when he stands down. They want a director who sees things their way, rather than someone who talks about poor quality applications and seeks to change the way in which the patent application process works.

While I can understand the attractions of blaming the USPTO and the man who leads it for the problems the US patent system faces, I am afraid that I just don’t buy it. It’s all just a little bit too easy and lets a lot of people off the hook. I am sure that there are serious managerial issues inside the USPTO - I have heard too many times from too many sources that there are for me to dismiss such claims – and it could well be that projections as to how the backlog will grow have not been properly put together, while examiners may be leaving in their droves because of the conditions under which they work. But here’s the thing: what Dudas is saying about growing backlogs and questionable applications, other people in other offices, which Dudas does not run, are saying as well.

If growing pendency times were just a USPTO issue, then Alison Brimelow of the EPO would not have told me last week that she believed that the EPO would have a backlog of around one million within in five years and that because of this she feared it “could not be mastered”. And here’s something else we talked about last week: anecdotal evidence that poor quality applications are clogging up the system. “I spend a lot of time talking to examiners and they tell me without doubt that there is stuff which crosses their desks which is of poor quality – it is one of their constant themes,” Brimelow said. “There does seem to be a problem with opportunistic use of the system, when we were set up to deal with unopportunistic use,” she continued. While this is all anecdotal at the moment, it may not be for too much longer. The EPO Controller Ciaran McGinley, who also sat in on the interview, told me: “We are beginning to hear about systematic evidence that could soon emerge that will back up what the examiners are saying.” If and when it does, that will make for fascinating reading.

Any patent attorney, will tell you, off-the-record, about the little tricks they pull to keep an application alive when it is clear it has no chance of finally being granted; they will laugh as they recount the applications that they have submitted in the full knowledge that they should not lead to a patent; they will shake their heads and smile wryly at some of the stuff that has got through, which should not have done. Taken individually, each of these stories is pretty harmless. But then when you think that just about every patent attorney in the world can tell them, you begin to understand how we get the backlogs we do. And, don't forget, patent offices know these stories too. 

So it is no surprise that offices think that if they could rid themselves of the “opportunistic” applications Brimelow refers to, while backlogs may not disappear, they could well become considerably more manageable. Given this, it is no great leap of the imagination to understand that patent offices are going to do all they can to limit such applications. Patent owners and their representatives can, of course, continue to turn a blind eye to the abuses of the patent system that are taking place, or pretend that they do not matter, or blame patent offices for them. But if they do, they cannot complain when offices take unpopular action – such as limiting claims and continuations (which, by the way, the Future Workload document published in December suggests the EPO also take a look at) – to tackle these abuses.

Of course, it is incumbent on all patent offices to ensure that their own houses are in order; but surely it is just as important for those that use the offices to ensure they are not abusing the service. It cannot be one rule for Jon Dudas and Alison Brimelow, and another rule for patent owners and attorneys. Unfortunately, it seems that this is just the situation we find ourselves in at the moment. And, I am afraid, it is not good enough.