Some debates over the last few years regarding patent office examination quality have largely focused on the idea the the sole measure of success is achieving the “right” result - i.e., only issuing valid, clear, and enforceable patents. This is, of course, an important objective. But, like other areas of the law, the search for the right answer, or the absolute truth, is never the sole consideration.

Some might argue that recent appellate court decisions and interpretations over the last decade have repeatedly erred on the side of giving the USPTO maximum flexibility to elevate this goal to the point of eviscerating many countervailing objectives. One example, is the ability of examiners to re-open prosecution on appeal, despite statutory language and precedent to the contrary. Another example is the fact that the USPTO allows examiner to even re-open prosecution after previously indicating a case is allowable, or to re-open prosecution after a reversal by the PTAB. Then there are post-grant reviews, and the list goes on. Of course making sure that all relevant art is considered and that the claims are clear and definite are indeed an important goals. But, as noted above, in the law generally, making the “right” decision is balanced against many other goals and never trumps above all else. Other considerations relate to things like preventing government bureaucracies from crushing small participants, avoiding arbitrary and capricious government behavior, speedy resolution of legal issues, procedural fairness, etc.

The fact that there is more to a legal system than the mere search for the truth is true in areas of the law where some might argue the search for the truth is even more important. For example, criminal defendants do not get new trials whenever there is some marginal new evidence, even though this might mean that an innocent person stays in jail. On the flip side, double jeopardy might prevent a clearly guilty person from going to jail even if the first trial was missing a key piece of evidence that only comes to light years later. Likewise, a injured plaintiff has to make their case and file before a statue of limitations expires or else be barred from recovery, even though they may well be entitled to significant damages from a negligent defendant. Lawyers don’t think twice about these situations since it is commonly understood throughout the law and legal system that legal rules are not always designed with the sole purpose to always achieve the “right” answer. Yet, somehow it is common to forget this when it comes to patent law and USPTO examination. Would barring re-opening of prosecution after a reversal by the PTAB mean that some patents might get issued with overly broad claims? Of course. Just like statutes of limitations will bar some plaintiff from recovering money they are owed, and limits on a defendants’ ability to present certain evidence might mean that a small number of innocent people go to jail. A reason the law tolerates such issues is that otherwise the system could become unworkable and unfair for one side or the other.

This isn’t to say that there are not many rules currently striking the right balance. Instead, the current debate seems to leave out the many ways in which the current rules are already stacked against patent applicants. The crushing weight of a government bureaucracy is more than enough to mean that many patent applicants with limited budgets will never obtain the patent rights they are entitled to receive, despite their diligent attempts. We need to remember that there are imperfections working in every direction and that the goal is not a perfect search for the truth, but the best we can do while creating a fair system.

Blackstone’s Ratio says it is better that ten guilty persons escape than that one innocent suffer. How do we want it to go for inventors? Better that ten truly worthy inventors lose or never get a patent than one person obtain an invalid patent?