3 Weeks Left to Submit Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights
Julie Burke, Ph.D.
Before imposing extra burdens and hurdles upon patent applicants, this former Quality Assurance Specialist invites the USPTO to first clean up its own act.
Addressing the procedural errors and lapses listed below will go a long ways towards improving robustness and reliability of patent rights.
Come to grips with the fact that the USPTO remains under a permanent injunction against revising the law on the U.S. patent claims, including Markush claims, and continuation practice[i]. Response to (B), (C), (D), (IV) 2 a-f, (IV) 3, 4 a-h, 6, 7, 8, 9, 10 and 11
Withdraw the DOCX Rule. Improve the quality of patent applications and their resulting patents as viewed for examination, prior art, and enforcement[ii]. This will help the IP community and examiners reliably search patent documents for prior art, identify support in specification and provide support in priority documents. Response to (I) 2, (I)2(b), (III) (A), (B)
Abolish MPEP 802.01. Section 121’s and means and. Revise Chapter 800 to comply with 35 U.S.C. 121, 37 CFR 1.141(a) and 1.142. The USPTO has no authority in the statutes or rules to require restriction between two or more independent OR distinct inventions[iii]. Many of the problems associated with restriction practice, continuations, divisionals, double patenting and terminal disclaimers arise from this single error. Response to (I) 2(f), (III) (D) and (IV) 4.
Note this duplicity occurs even in the October 4, 2022, Federal Register Notice, which correctly tracks the statute that the USPTO then does not follow:
In situations in which two or more independent and distinct inventions are claimed in a single patent application, the USPTO is authorized by the patent laws and implementing regulations to require the applicant to restrict the application to one invention.
Disclose and explain the secret C-star (C*) codes that SCEs assign to patent applications to allot time for each individual application’s search and examination[iv]. Response to (I) 2(a) and (b)
Undo the June 2020 change to MPEP 706.07(b) which quietly placed administrative and financial constraints and burdens on inventors and patent practitioners without going through a public review and comment period[v]., [vi] Response to (I) 2(f), (III) (C) and (IV) 3
Re-instate the pre-2014 policy to use marks (*, <, >) to show exact changes made in each MPEP revision. This will help USPTO personnel and practitioners identify policy changes.
Require Supervisory Patent Examiners to comply with MPEP 707.02. A secret panel of nameless, faceless Quality Assurance Specialists providing extra behind-the-scenes scrutiny to certain applications reeks of the SAWS program[vii]. Response to (III) C, (IV) 3 and 8
Require USPTO personnel to comply with MPEP 710.06: Where the citation of a reference is incorrect or an Office action contains some other error that affects applicant’s ability to reply to the Office action and this error is called to the attention of the Office within 1 month of the mail date of the action, the Office will restart the previously set period for reply to run from the date the error is corrected, if requested to do so by applicant.
Doing so will reduce the number of petitions filed under 37 CFR 1.181 and create clear and complete file records. Response to (I) 2
- Align the Quality Element of the Examiner’s Performance and Appraisal Plan (PAP) with Office of Personnel Management’s standards for GS-1224 position classification[viii].
Raise the activity for assessing compliance with 35 U.S.C. 102, 103 and 112 from Basic to Legal. Stop assigning advanced legal tasks to entry level employees who function at the Basic level. Response to (I) 2, (III) B, (IV) 2
Raise the activity level for (3) Conducting search and (5) Planning field of search from Basic to Advanced. Response to (I) 2, (III) A
Hold examiners accountable for correctly performing the following activities, which the current PAP lists under the USPTO’s homegrown non-error based assessment.
- (2) Treating disclosure statements. Response to (I) 2(d)
- (2) Treating claims of priority. Response to (I) 2(e), (IV) 2(c)
- (11) Evaluating and applying case law as necessary. Response to (I) 2
- (12) Evaluating sufficiency of affidavits/declarations. Response to (I) 2(d)
- (14) Promoting compact prosecution by including all reasonable grounds of rejections, objections, and formal requirements (MPEP 707.07(g)). Response to (I) 2 and (C)
- (15) Making the record, taken as whole, reasonably clear and complete. Response to (I) 2
- Treat PTAB reversals (overturning patent corps substantive errors) and petition decisions[ix] (overturning procedural errors) as indications of poor patent examination quality that highlight areas in need of additional training and oversight. Response to all10. Treat PTAB reversals (overturning patent corps substantive errors) and petition decisionsix (overturning procedural errors) as indications of poor patent examination quality that highlight areas in need of additional training and oversight. Response to all.
Julie Burke Response to PTO-P-2022-0025 IP Quality Pro LLC
[i] Sherry Knowles. Note to Senators: U.S. Patent Office Remains Under a Permanent Injunction. IPWatchdog June 20, 2022, available at https://ipwatchdog.com/2022/06/20/note-senators-u-s-patent-office-remains-permanent-injunction/id=149690/
[ii] Julie Burke. Expert Analysis-Opinion. DOCX Plan Risks Patent Quality and USPTO Should Reverse It. LAW360 August 8, 2022. Available at
[iii] Stephen L. Malaska. Comments on Proposed Changes to Restriction Practice in Patent Applications. Docket No PTO-P-2010-0030. Pages 7-12. August 13, 2010. Available at https://www.uspto.gov/sites/default/files/patents/law/comments/intellectualventures13aug2010.pdf
[iv] Julie Burke. Expert Analysis. A Quiet Change at the USPTO Creates a 2-Tier Exam Process. LAW360 April 26, 2022. The second most-read IP LAW360 guest article in 2022. Available at https://www.law360.com/articles/1482284/a-quiet-change-at-the-uspto-creates-a-2-tier-exam-process
[v] Julie Burke and David Gass. Expert Analysis. A USPTO Examination Policy Change You May Have Missed. LAW360. August 19, 2020. The second most-read IP LAW360 guest article in 2020. Available at https://www.law360.com/articles/1301489/a-uspto-examination-policy-change-you-may-have-missed
[vi] Julie Burke, Michael Spector, and William Smith. Newly Created First Action Final Rejection Policy Adds Needless Complications to Patent Prosecution. IPWatchdog September 22, 2020. Available at https://ipwatchdog.com/2020/09/22/newly-created-first-action-final-rejection-policy-adds-needless-complications-patent-prosecution/id=125456/
[vii] Gene Quinn. SAWS Retired by USPTO. IPWatchdog. March 2, 2015. Available at https://ipwatchdog.com/2015/03/02/saws-retired-by-uspto/id=55329/
[viii] Julie Burke, Ph.D. Does the USPTO’s Roadmap to Improved Patent Quality Lead to Lake Wobegon? IPWatchdog July 1, 2021. Available at https://ipwatchdog.com/2021/07/01/usptos-roadmap-improved-patent-quality-lead-lake-wobegon/id=135152/ https://ipwatchdog.com/2021/07/01/usptos-roadmap-improved-patent-quality-lead-lake-wobegon/id=135152/
[ix] See a series of petitions-related articles posted at Petition.ai, available at https://petition.ai