Joff Wild

In the next issue of IAM we take a close look at the controversial subject of patent quality: what does it mean, how can it be identified, is it possible to measure? To try to find some answers we asked a number of prominent figures in IP their views. Among those who agreed to take part was Jon Dudas, Director of the USPTO. This is part of what he told us:

At the USPTO, our objective measurements tell us that patents today are of a higher quality than they were 10, or even 5 years ago. In 2006 and 2007, the USPTO had its lowest examination error rates in the last quarter century--which is mainly due to adding significant new quality measures in recent years. By every objective measurement —including end-of-process and in-process reviews, certification and recertification of examiners, and percentage of affirmances at the Board of Patent Appeals and Interferences — we’ve determined the quality of patents granted has been improving, and we expect this to continue because of current and future quality initiatives.

A major concern we have at the USPTO--and it is a concern I have heard from many IP offices around the world--is the room for improvement in applications coming through our door. There has been a dramatic decrease in the allowance rate, or the percentage of patent applications that ultimately get approved. Our allowance rate has dropped from 72 percent in 2000, to 44 percent in the first quarter this year. This is due partly to our quality initiatives, but much is due to the lack of quality in many applications we receive.

I have heard similar things from other people as well. They tell me that over recent years the patent granting process in a number of areas has tightened up at the USPTO, so that what may have got through a few years ago does not pass muster now. Indeed, this is one of the reasons why debates about quality that focus on current litigation based on patents granted a few years back at the office are so misleading. However, if applicants do not understand that times have changed - or just ignore the fact because they make good money from the application process, or like to use applications as a marketing or profile building exercise, or even to attract money from investors - then you are going to get a number of sub-standard submissions and the acceptance rate will inevitably come down dramatically.

That said, it is possible to go too far the other way. At 44%, the USPTO acceptance rate that Dudas refers to is now well below the last annual rate reported by both the EPO (56% in 2006) and the JPO (48.5% in 2006). I suppose it is possible that the USPTO gets more dodgy applications than other offices, but it could also be that examiners have had the need to lower approval rates so drummed into them that they are always looking for reasons to say no. If this is the case, and I have also heard this claim from people in the States, then it is regrettable. When you have examiners whose first thoughts are to say no, then you end up with a situation where good applications as well as bad fall by the way side. That, just as much as sub-standard grants, brings the system into disrepute. But, I suppose that Dudas would argue that examiner decisions are also being rubber stamped by the USPTO appeals board at higher rates than ever before. Basically, it's a tricky one. 

Others contributing to the feature include: Alison Brimelow, president of the EPO; Judge Pauline Newman, of the US Federal Circuit; Masanobu Katoh, head of IP at Fujitsu; Horacio Gutierrez, VP of licensing at Microsoft; and Sherry Knowles, head of IP at GlaxoSmithKline. Subscribers to IAM will find a wide variety of viewpoints; something which goes to show just difficult patent quality is to quantify.

IAM 29 published at the end of March and will be available online at the beginning of April.