The USPTO puts significant effort into monitoring the quality of patent examination according to their website. As stated many times on this blog, examiners have a difficult and tireless job. They are under time pressure just like everyone else in the patent profession, with constantly evolving rules and laws. No one is perfect, though, and there is always room for improvement in examination quality. One aspect of the USPTO’s quality control is described as “Patent Quality Assurance.” The USPTO explains that this …
… is accomplished through work product reviews, perception-based surveys, and in developing and implementing data-driven quality improvement initiatives and training for the patent examining Corps. Timely, reliable, and meaningful indicators of patent examination quality are governed by an ISO 9001:2008-certified quality management system.
The Office of Patent Quality Assurance, within the Office of Patent Examination Policy, administers this program.
It is great that these programs and departments are working on monitoring and improving examination quality. But one area that seems to be missing is any way for feedback from the PTAB decisions to be integrated into the program. From a review of the USPTO website, little is found as to how any feedback from PTAB decisions affects examination quality metrics, or is used in any way for quality measurement, training, or anything at all.
In fact, it appears that the opposite is true. From MPEP 1308.03 “Quality Review Program for Examined Patent Applications” (underlined emphasis added)
The Office of Patent Quality Assurance administers a program for reviewing the quality of the examination of patent applications. The general purpose of the program is to improve patent quality and increase the likelihood of patents being found to be valid.
The quality review is conducted by Review Quality Assurance Specialists on a randomly selected sample of allowed applications from each examiner. The sample is computer generated under the office-wide computer system (PALM), which selects a predetermined number of allowed applications from each examiner per year for review . A subsample of the selected allowed applications are both reviewed and independently searched by the reviewers. The only applications excluded from the sample are those in which there has been a decision by the Board of Patent Appeals and Interferences, or by a court.
While it makes sense to treat appealed cases differently, it is not clear why they are excluded in their entirety. It could be argued that appealed cases are one of the best sources of quality assessment. After all, those cases have essentially already been curated at the expense of the applicant and so the USPTO is given free information it could use to zero in on cases with a higher potential to highlight systemic issues in examination. The USPTO seems to recognize the importance of cases on appeal since it often designates a Review Quality Assurance Specialist (RQAS) to sit in as one of the three members of an appeal conference (held before the examiner provides an Answer).
In this way, the argument for the importance of cases on appeal in terms of feedback on examination quality is actually reinforced by the USPTO’s own process of inserting the RQAS onto appeal conferences. The MPEP explains appeal conferences this way:
MPEP 1207.01 Appeal Conference
An appeal conference is mandatory in all cases in which an acceptable brief (MPEP § 1205) has been filed. … The participants of the appeal conference should include (1) the examiner charged with preparation of the examiner’s answer, (2) a supervisory patent examiner (SPE), and (3) another examiner, known as a conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal. During the appeal conference, consideration should be given to the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value.
Sometimes the two other participants are the examiner’s supervisor, and another supervisor in a related art unit. Other times, one of the two participants is a RQAS. The RQAS is described as follows (according to the USPTO website):
RQAS are experienced Primary Patent Examiners and former Supervisory Patent Examiners, whose examining experience is in the general area of the Technology Center whose applications they are assigned to review. RQAS are responsible for performing timely, substantively and procedurally sound reviews. RQAS are required to be thoroughly familiar with all patent examination tools, and to keep abreast of the latest patent rules and regulations. RQAS must record their error findings and provide supporting documentation so that the TC can assess the validity of any proposed error finding. Each team of RQAS is supervised by a Supervisory Quality Assurance Specialisst (SQAS). SQAS are experienced former Supervisory Patent Examiners who ensure that reviews performed by the RQAS are substantively and procedurally accurate. Review findings are used to identify quality issues and OPQA resources and data are used to support quality improvement programs within the Patent Corps.
One might think that review of the cases on appeal where a RQAS was one of the conferees could be an important metric. Applicants may believe that if they receive an examiner’s answer and see that one of the conferees was RQAS, there is little chance of success at the PTAB because the RQAS is a strong judge of proper examination (and the avoidance of examiner error). After all, the RQASs are the ones reviewing examiners’ day-to-day work and scoring it to show the USPTO’s very high quality performance. But if the RQAS members never themselves are reviewed as to performance at the PTAB, then this logic starts to break down. Perhaps the USPTO does include feedback from USPTO decisions in some way without making it clear or easy to find on their webiste.
While there may be close cases where an RQAS is wrong to approve an Examiner’s answer, it is surprisingly easy to find PTAB decisions where the rejections are reversed, and where the rejections are reversed on basic patent law principles in which there really should be no dispute in the first place. In other words, we are talking about cases that should never get to final rejection, let alone an appeal, and certainly not all the way to a PTAB decision.
A recent example is this Black and Decker invention (SN related to 15/887,209) relate to hand held tools, where a RQAS is listed as one of the conferees. Claim 1 on appeal is listed below (emphasis added as to the issue on appeal):
A hand-held tool, comprising:
a housing, the housing including a handle; a motor assembly; a battery assembly; and
a circuit board; wherein the motor assembly includes a motor, the motor including a rotatable motor output shaft, a motor positive terminal and a motor negative terminal;
wherein the motor assembly further includes a first rigid conductive electrical connector having a first end fixed to the motor positive terminal and a second end fixed to the circuit board;
wherein the battery assembly includes a battery cell with a battery cell positive terminal and a battery cell negative terminal;
wherein the battery assembly further includes a second rigid conductive electrical connector having a first end fixed to the battery cell positive terminal and a second end fixed to the circuit board.
The issue on appeal relates merely to the rigid connector having one end fixed to the motor positive terminal and the other end fixed to the circuit board. The applicant and the examiner agreed that the cited prior art (Forster) had a rigid conductive electrical connector having a second end fixed to a circuit board, but that the positive terminal of Forster’s motor assembly was connected to the rigid conductive electrical connector by wires.
Now, in the abstract, under BRI, perhaps, an examiner could argue that there was some way in which the claim scope reads on the Forster design. The problem here was that Black and Decker’s specification explicitly excluded that interpretation. From the specification:
Consistent statements were also provided at paragraphs 256, and 277, for example. Each of these portions of the specification made it clear that the rigid fixed connections are in contrast to, and thus explicitly exclude, wired connections. Nowhere in the specification was there anything else to the contrary. And every patent professional knows, or should know, that claims are interpreted in light of the specification, and consistent with the specification. The PTAB made quick work of the appeal:
The Examiner has not acknowledged those disclosures or otherwise explained how the Examiner’s broad interpretation of the disputed term is consistent with the relevant portions of the Specification. On the contrary, it appears that the Examiner’s interpretation allows the disputed term to encompass subject matter (e.g., wired connections) that the Specification indicates falls beyond the scope of the term.
On this record, and particularly in view of the Examiner’s failure to address relevant portions of the Specification, we are not persuaded that the Examiner has established that the relied-upon embodiment of Forster falls within the scope of claim 1.
So, either the RQAS never read the specification, or was so misinformed on the law of the Broadest Reasonable Interpretation (BRI) that they simply ignored the specification and considered only the claim language in isolation. Either situation is deeply troubling for an experienced examiner, let alone someone who is charged with reviewing the quality of other examiners. The applicant was forced to expend resources that should not have been expended, and user fees (from all applicants) were wasted on USPTO effort that should not have occurred.
No one is perfect and reasonable minds can differ on some issues. Examiners have a difficult job and one that is inherently challenging to evaluate in terms of quality. However, in cases where the issue is so simple and clear, and in this case where the rejection is clearly in error, one cannot help but question the structure of the USPTO’s quality assurance system.