Patent Office Should Strengthen Search Capabilities and Better Monitor Examiners’ Work
Recent trends in disputes over patent validity in USPTO proceedings and in federal courts have raised concerns about the overall validity of patents issued by USPTO. Some observers, citing the extent to which the validity of granted patents has been successfully challenged, believe that USPTO examiners do not always identify the most relevant prior art, which has resulted in granting some patents that may not meet the statutory requirements for patentable inventions. Specifically, under the 2011 Leahy-Smith America Invents Act, a party other than the patentee may bring a proceeding before the Patent Trial and Appeal Board to challenge the validity of a patent. From September 2012 through February 2016, 719 patents have been partially or wholly invalidated based on prior art submitted through one type of these proceedings. As a result of these concerns and others about whether the U.S. patent system continues to support innovation and competitiveness, Congress has continued to consider patent reform legislation in recent years.
USPTO Examiners face a number of challenges in their efforts to search for prior art, including the large volume of prior art from multiple sources to consider, unclear patent applications, difficulties identifying or accessing relevant nonpatent literature and prior art in foreign languages, and limits on the time available to search for relevant prior art, among others.
USPTO has taken actions to address challenges in identifying prior art, but some actions have limitations. For example, USPTO is in the process of upgrading its search tools. However, examiners will still need to access a variety of external sources to meet USPTO’s requirement to consider nonpatent literature. Federal internal control standards call for controls to evolve to remain effective and USPTO officials noted that the new search system can be expanded to include more nonpatent literature as the European and Japan patent offices have done. However, USPTO does not have a documented strategy for identifying additional sources. Without such a strategy, USPTO cannot be assured that its information technology investment will improve examiners’ searches.
U.S. Government Accountability Office (GAO) was asked to identify ways to improve patent quality through use of the best available prior art. This report (1) describes the challenges examiners face in identifying relevant prior art, (2) describes how selected foreign patent offices have addressed challenges in identifying relevant prior art, and (3) assesses the extent to which USPTO has taken steps to address challenges in identifying relevant prior art. GAO surveyed a generalizable stratified random sample of USPTO examiners with an 80 percent response rate; interviewed experts active in the field, including patent holders, attorneys, and academics; interviewed officials from USPTO and similarly sized foreign patent offices, and other knowledgeable stakeholders; and reviewed USPTO documents and relevant laws.
GAO is making seven recommendations, among them, that USPTO develop a strategy to identify key sources of nonpatent literature, establish goals and indicators for prior art search quality, and collect sufficient information to assess prior art search quality. USPTO concurred with GAO’s recommendations.
Full report click here
