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PRESS RELEASE
August 22, 2018
#18-16

CONTACT: (Media Only) 
Paul Fucito
(571) 272-8400 or paul.fucito@uspto.gov


USPTO Seeking Public Comments on Draft 2018-2022 Strategic Plan


WASHINGTON – The United States Patent and Trademark Office (USPTO) today announced it is seeking comments on the draft 2018-2022 Strategic Plan. The draft plan sets out the USPTO's mission-focused strategic goals: to optimize patent quality and timeliness; to optimize trademark quality and timeliness; and to provide domestic and global leadership to improve intellectual property (IP) policy, enforcement, and protection worldwide.

The USPTO welcomes comments on all aspects of the plan. Comments should be sent by email addressed to Strategicplanning1@uspto.gov. The USPTO will consider all comments received during the public comment period from August 22 through September 20, and anticipates posting the final strategic plan for FY 2018-2022 on www.uspto.gov in November 2018.

For more information on the proposed 2018-2022 Strategic Plan at the USPTO, please visit www.uspto.gov/about-us/performance-and-planning/strategy-and-reporting.

For non-press inquiries, please contact Brendan Hourigan at Brendan.Hourigan@USPTO.GOV.

Stay current with the USPTO by subscribing to receive e-mail updates. Visit our Subscription Center at www.uspto.gov/subscribe

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7 Comments

  1. On pages 9, 10, and 30 of the draft plan, you will find what little there is regarding searching; suggested improvements, while clearly needed, are insufficiently specific and rely on access to resources and technology rather than greater expertise. I find this disappointing.

  2. Could PIUG comment as a body on this?

    1. I certainly think we can.  What points would we most like to make?  It is just Elliott's point above that they should be emphasizing greater expertise and increasing the training of their examiners?  Are there other points we would like to make?  I think we should keep it fairly concise.

      1. Robert Grantham has some written text that we could possibly use with his consent, as it was written with something like this in mind. I do agree that it needs to be concise and clear.

        Personally, I would advocate for a significant and definite chunk of time to be assigned to searching alone for each art unit depending on difficulty to search and volume of art. Also, training of examiners on how to complete a comprehensive search strategy and change their goal to find ALL relevant art from the beginning vs stopping once they have art that is enough to make a rejection.

        Before relying on the new automated tools, evaluating them by comparing the quality and volume of results found with expert patent searchers' results.

    2. I sincerely regret the small window of opportunity (8/22-9/20) for our community to think and speak collectively about this really important topic.

      The NE Conference is at hand in early Oct, and there would be good opportunity for us to come together and candidly discuss the issues in detail. A USPTO presentation+workshop on Wed (Workshop day) would be a definite bonus, if we could get them to push the deadline for comment back a few weeks.

  3. Thank you Elliott for bringing this to the group’s attention.  PIUG is fortunate to have someone following PTO announcements.  Thank you to Andrea or mentioning my efforts in this area. 

    I agree that PIUG should take this opportunity to address the issue that Elliott has succinctly summed up.  As has been said in this space before, PIUG is the only organization that can speak authoritatively on the subject of searching and we should do so every chance we get.  However there are number of things that we need to bear in mind if the organization is going to comment on this issue.  A subject that has never ever been talked about is very complex.  There is no policy, rule, or regulation – nothing - that covers finding prior art so concise is probably easier said than done. 

    First, the PTO will not address their failure to sufficiently identify prior art on consistent basis.  Even though PIUG has previously commented on search deficiencies https://www.uspto.gov/sites/default/files/documents/etacomment_a_piug_30jan2017.pdf the PTO remains silent on the subject.  The GAO very visibly commented on this subject.  The PTO once again only proffers improved technology as the answer to a better search product.  So while it is important to comment when the PTO solicits comments the PTO is not ultimately the target audience.

    Second we absolutely must have a factual reason to underpin our argument for enhanced expertise.  We all agree (maybe?) that many patents issue unsupported by prior art evidence.  Such a position, however, is mostly anecdotal; where is the evidence that documents substandard searching?  The evidence is in the file history of every single successful IPR.  This fact cannot be avoided.  Successful IPRs establish deep problems with search.  However the legislative debate right now over IPRs is about the Standard of Proof regarding new evidence.  The Standard of Proof debate is about the Presumption of Validity.  Current pending legislation is silent on why said new evidence is absent from consideration by the examiner to begin with.  Substandard searching, therefore, is directly tied to the Standard of Proof e.g. the Presumption of Validity debate.  We also need to understand that prior art is factual evidence on which the Presumption of Validity stands.  All of this points again to the complexity of the subject.  Doing something to improve substandard searching in my view has to be done here.

    Further, a law, if passed, that establishes a high Presumption of Validity standard without prior art/search reform/enhancements will be a blow to our already declining industry.  Why?   No one is talking about searching (or better yet substandard fact finding) even though weak patents are being overturned and it is clear from IPRs why.  Complete silence on the subject is dismissive of our position.  Passage of a law that ignores searching will make substandard searching “the law of the land.”  I am personally saddened by this possibility.

    Third, if we are going to talk about improving the system we must argue that we the work we do is specialized. The best way to assure quality prior art on a consistent basis is when the person searching does the task full time.  The PTO is responsible for searching but nothing except tradition or orthodoxy says it has to be the same person.  When the person who examines on the merits also searches that person is a part time searcher at best – and they might not even like it.  Further, it is unreasonable to think that every application can be thoroughly searched.  Giving applicants a range of choices regarding prior art can cut down on search volume.  Large companies’ get patents that they never intend to assert so why should those be thoroughly vetted, for instance.  There are a lot of other problems with prior art, like applicants submitting 2k documents or submitting 0 documents (which would be ok if the applicant chose that as an option).  Not to digress but I only highlight again the complexity of the problem.   Anyway a plan to improve searching has to move beyond a model that hasn’t changed since established in 1836 and recognize that finding prior art evidence to support the Presumption of Validity is critical and “valuable” to the system and that the current model is failing in this regard.  I think embedding professional searchers in the Art Units is an idea worth investigating. Presumably the embedded searcher would have the search goals that Andrea mentioned since quality search results would be their primary focus.   Searching is a stand-alone function where higher quality results are attained more consistently when the person doing the analysis searches full time and is therefore a professional searcher.  The function needs policy direction but getting heard through the silence will be difficult but surely worth the effort.

  4. Apologies on being late to the party, but I would like to add a few notes to the conversation. The biggest issue or hurdle is that the USPTO does not seem to believe that poor prior art search quality is an issue or hurdle. As Robert Grantham has pointed out, the evidence is in the large number of successful IPRs. That seems to indicate that prior art research is the weak point of the prosecution process at the USPTO. Until there is a genuine appreciation of this at the USPTO we are unlikely to get any real traction.

     

    I admit there are some real hurdles to overcome on the issue of quality prior art research. First, examiners are judged or evaluated on the examination process, not their search skills. As noted, there are a lot of patents being found invalid during IPRs that indicates poor quality searching, but that evidence is only found 8-10-12 or more years later after a patent has been asserted. There is the ‘find it on Google’ problem that floats like a miasma in today’s world. An addendum to the Google problem is the belief that a bit more technology will solve the problem – just tweak the algorithm (which is a real problem when you are not exactly sure how the algorithm works, what are the effects of the tweaks, the data itself is bad and no one is really looking at the quality of the results). And there is just momentum – this is how we have always done it.

     

    Due to the small time window (even smaller when you reply late to a thread) and the issues around prior art searching, I would echo Martha’s call for a concise response. I would recommend a short overview of why we feel better search is needed and perhaps a few high level recommendations (bullet points). However, I believe our main thrust would be to offer our assistance as an organization of patent information and patent search experts to begin creating a better, more comprehensive approach to search at the USPTO. I realize we do speak to the USPTO and this just restates previous opinions, but this is a very public profile opportunity to do so. We should also follow up and start expanding our efforts to the GAO, members of Congress, patent attorneys and anyone else who may be able to provide feedback to the USPTO.

     

    Wish we had a nice, simple, cut through the Gordian knot answer, but this will likely be a long, hard slog.