Law360 (April 10, 2019, 9:09 PM EDT) — The U.S. Patent and Trademark Office’s testing of artificial intelligence tools and other initiatives to help examiners evaluate patent applications is a step in the direction of improving patent quality, although experts say it is not a silver bullet.
Increasing the caliber of patents has been a focus of the office under Andrei Iancu, a former Irell & Manella LLP litigator who took over as agency director last year. One of the most important indicators of a patent’s quality, Iancu has said, is whether it is able to stand up to a legal challenge.
“To further improve the original examination, a next step would be to increase examiners’ ability to find the best prior art during examination,” Iancu said during a recent speech, acknowledging there can be a gap “between the prior art found during initial examination and the prior art found during litigation.”
If we could further narrow this gap in prior art between examination and litigation, then the accuracy of the patent grant — and therefore, its reliability — would increase, he said.
The USPTO has been making efforts to take that next step, exploring artificial intelligence technology as a way to help examiners in their searches for prior art and collaborating on projects designed to collect hard-to-find documents in a single database.
Those familiar with the examination process say the agency’s efforts could move the needle in terms of improving patent quality. But getting to the finish line will likely require a multifaceted approach, which may include things like giving examiners more time to analyze an application.
Surfacing the Best Prior Art
Joshua Landau, patent counsel at the Computer & Communications Industry Association, said USPTO examiners are well-trained in sifting through patents and older applications when analyzing whether a new invention is actually a novel idea. But other kinds of prior art, such as old product manuals or websites, can be more difficult to find.
These challenges are especially relevant with technologies like computer software, where many developments are never patented.
“There’s no good way to search [coding website] GitHub and see what somebody’s code has been doing,” Landau said.
In an effort to address some of these obstacles, the Massachusetts Institute of Technology partnered with Cisco and the USPTO to create the Prior Art Archive, a public repository for documents and existing work.
Anyone can upload or search documents in the database. When the initiative was announced in October, Cisco had already submitted 165,000 documents into the archive. Companies like Dell, Intel and Microsoft have also said they will participate.
“The archive has the potential to significantly improve patent quality while reducing the number of bad patents issued,” Kate Darling, a researcher at the MIT Media Lab, said in an MIT News article shorty after the archive was unveiled.
The USPTO is also testing its own artificial intelligence and machine-learning software to help the agency’s 9,000 examiners in their searches. And Iancu has said the office is exploring tools that help to surface prior art that may be located in different places.
“One of the benchmarks of a high-quality patent is whether it can withstand fair challenges down the road,” he said in a January speech. “Surfacing the best prior art early helps to increase the likelihood that this will happen. AI can help us do that.”
How widely tools like the Prior Art Archive are utilized remains to be seen. But Chris Cotropia, the director of the Intellectual Property Institute at the University of Richmond School of Law, said getting the right documents in front of the examiner is just one part of the equation.
The other part of it is giving the examiner enough time to digest and adequately understand and apply the art, he said.
More Time, More Quality
Examiners spend, on average, about 19 hours reviewing a patent application, studies have shown. This includes reading the application, searching for prior art and interacting with the inventor. Academics and former examiners widely agree that allowing more time in the process would be a good thing.
There seems to be a clear indication that more time would give you more quality, Cotropia said.
The connection between patent quality and the time examiners have to review an application has been the subject of extensive research by Melissa Wasserman, a professor at the University of Texas School of Law, and Duke Law School professor Michael Frakes.
They found higher-level examiners, in particular, would benefit from additional time. While that may seem counterintuitive, each time an examiner is promoted to a higher pay grade, the number of hours they are given to review an application decreases 10 to 15 percent.
“Our research suggested that as examiners get promoted up the [general schedule pay] scale, where they get less and less time to review applications, they actually find less prior art and make fewer rejections,” Wasserman said. “We interpreted this to mean they may be time-crunched.”
Were examiners given twice as much time to review patent applications, Wasserman and Frakes’ research suggests the number of patents granted would fall nearly 20 percent. This equates to approximately 80,000 fewer patents issued each year.
One of the biggest pushbacks against the idea of allotting examiners extra time is cost — the USPTO would have to hire additional examiners to keep up with the workflow, and that wouldn’t be cheap.
Wasserman and Frakes estimate that doubling examiners’ time to review applications would cost the USPTO about $660 million annually, which the agency would likely cover by raising its fees. But their most recent paper argues this cost would be justified.
Decreasing the number of dubious patents, they say, will save litigation expenses, both in the district court and at the Patent Trial and Appeal Board — to the tune of about $600 million. And they found an additional $300 million would be saved in legal fees for applicants in patent prosecution.
“What we see is if you give examiners more time, they’re going to do a better job at the beginning and it ends up decreasing the number of rounds of review that occur,” Wasserman said.
Better Applications
That said, patent prosecution is a two-way street. Some of the onus falls on applicants and their attorneys to help ensure the examination process runs smoothly.
For example, applicants should be clear about what innovation is being claimed. Thoroughly describing the terms in the claims and being precise will help the examiner fully understand the invention and search for the best prior art.
“I think the process works more often than not if there’s an application that clearly conveys what the invention is and the examiner is diligent,” said Tariq Najee-ullah, a former examiner who works as a patent agent at Atlanta-based Founders Legal and created the IP education platform Patent Insider.
Former examiners also noted the requirement that applicants disclose to the USPTO all known prior art. Not doing so can result in a patent later being declared unenforceable. Perhaps out of an abundance of caution, applicants will sometimes dump hundreds of documents on the lap of the examiner.
“What are the chances the examiner is going to look at all those references in detail? They don’t have the time,” said David Kim, a partner at Stinson Leonard Street LLP. The question, he said, becomes how much information is too much information.
There’s a balance that attorneys can certainly take into consideration to help promote patent quality, Kim said.
There also may be opportunities for companies and groups to further educate examiners on the technologies they are working with. Jessica Harrison, another USPTO alumni, said that while the agency does invite industries to speak with examiners, those programs could be greatly expanded.
“Industries as a whole could do more to come in and educate examiners on the particular technological areas,” said Harrison, who is currently a partner at Resolute Legal PLLC and adjunct professor at the University of New Hampshire School of Law.
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