IP Law Bulletin

The United States Patent and Trademark Office (USPTO) recently adopted a new procedure for measuring the quality of patent examination. At the heart of the new procedure is a composite, seven-feature quality metric aimed to reveal quality issues during examination and to identify their sources so that effective quality procedures may be identified and encouraged. The new seven-feature composite quality metric is composed of old metrics from previous USPTO quality procedures and new metrics formulated based upon surveys, internal review, and data related to quality measurement purposes (the data was previously collected, but had never really been used). Knowledge of these metrics will allow practitioners to better manage the expectations of their clients, and may also help practitioners take actions to help expedite the prosecution process to allowance.

Two metrics carried over from the old metrics to the new metrics are the Final Disposition Compliance Rate and the In-Progress Compliance Rate. These rates are random samplings of “clear errors” identified during the examination process of an application. For example, a clear error by an examiner in the allowance of a claim is an unreasonable failure to make a rejection of the claim for one or more reasons provided in the patent laws. Likewise, a clear error by an examiner in making a rejection or objection in a final rejection is the making of an unreasonable rejection or objection. However, if an action preferred by the examiner’s Supervisory Patent Examiner differs from the action taken by the examiner, it is considered a difference of opinion and not a clear error as long as the action taken by the examiner is reasonable. The USPTO’s Office of Patent Quality Assurance (OPQA) is responsible for making these determinations of reasonableness.

Two new metrics that are now being introduced use multi-factor reviews. These two metrics are the First Action on the Merits (FAOM) Search Review and the Complete FAOM review. These metrics attempt to apply a multiple factor scoring process to measure a degree of compliance to best practices of the USPTO. For the Complete FAOM review, each omitted rejection, and the reasonableness and clarity of the rejections made, are reviewed on a per-claim basis. The Complete FAOM review further includes a set of per-action attributes, such as the clarity of the interview record, that addresses the overall quality of the examination.

A third new metric being introduced is the Quality Index Report (QIR). The QIR is produced from statistical data collected by the USPTO Patent Application Locating and Monitoring (PALM) database. The QIR is by itself an algorithmic composite of five measurements collected on a per-disposal basis: (1) the number of actions; (2) the number RCEs; (3) the number of re-openings after a final action; (4) the number of first non-final actions; and (5) the number of restrictions after a first action. All of these statistics are collected for every application filed with the USPTO and are statically examined in aggregate to detect outlier examination processes that may, or may not, indicate quality issues. Each of these five metrics, including the QIR, are compiled by the OPQA with sampling sizes designed to reveal Examination Corps-level or technology discipline-level quality estimates. Only aggregate data, however, will be publicly disseminated.

Finally, the last two new metrics are generated from an internal survey and an external survey performed by an independent survey designer/conductor. The external survey aims to measure the perceived quality of the patent process of applicants and practitioners, and the internal survey aims to measure the perceptions of the examination corps.

The seven metrics are combined into a composite quality metric—a single score. The composite quality metric will be publicly disseminated monthly and conveniently visualized via a graphical dashboard widget. Publication, however, is not set to begin until the end of the 2011 fiscal year, which is on September 30, 2011. The first year’s score will be used as a base score, which will be used to set a Stretch Goal for the reminder of the five-year strategic planning period, to allow a relative comparison with subsequent scores.

We will monitor these new metrics once they become publicly available to bring you practical tips for improving your practice in light of this new information. We anticipate that knowledge of these metrics will allow practitioners to better manage the expectations of their clients, and may also help practitioners take actions to help expedite the prosecution process to allowance.

To see a detailed listing of the metrics, the surveys, and their composite weighting, please click here.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.