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Lack of quality examiners at center of patent problems

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Many of the problems raised in the patent reform debate can be solved by improving the quality of patent examiners, according to a group of intellectual property professionals speaking at a Daily Transcript roundtable Tuesday.

For several sessions of Congress, lawmakers have attempted to craft changes to the U.S. patent system. But the proposed legislation has continually failed, stymied by a stalemate between competing interests in the biotech and software/high-tech industries.

“A lot of these reforms are just after the symptoms of the problem,” said Tom Franklin, a San Diego partner with Townsend and Townsend and Crew LLP. “But the problem is a lot of patents that are out there shouldn’t be out there.

“If you can (solve) hiring and retention (at the U.S. Patent & Trademark Office), you’re going to get better patents and less trolls.”

Several roundtable participants acknowledged the PTO has a hiring and retention problem. Many examiners work for less than a year, forcing the office to hire approximately 1,200 new examiners annually.

It gives the PTO little continuity and less institutional knowledge. It also has led to a lengthy backlog of patent applications.

“There’s a real tension between getting the backlog reduced and keeping the quality up,” said Bruce Greenhaus, vice president, chief patent counsel for Entropic Communications. “One of the biggest problems that’s created the troll issue -- nonpracticing entities holding up industry -- is the fact that examination is a difficult process to do well, at best. If you have poorly qualified or poorly trained examiners issuing patents, then it becomes very difficult for an entity to put a product out there and not have all of these patents come back at them.”

Shane Hunter, a partner of Townsend and Townsend and Crew LLP, said it’s difficult to get quality examiners because they aren’t getting the type of training they need.

“You see certain rejections or a certain (quality) level for about six to eight months,” he said. “Then you get a new examiner with different training, and you get different rejections and a different level.”

One solution to the hiring and retention problem is to create field offices for the PTO. Currently, all patent examiners work out of the Washington, D.C., office, forcing the agency to ask all potential employees to move there.

“We looked at businesses of comparable size, and they tend to have 30 different locations,” Franklin said. “There really is no governmental agency with a national constituency -- customers across the nation -- that has a single location. It’s actually absurd.”

He said the PTO could set up a field office in Riverside County, as an example, that specialized in wireless patents. It’s an area with a lower cost of living than D.C. that likely features many unemployed wireless engineers who would love a government job.

Liz Bui, director of intellectual property and corporate development for Novocell, agreed.

“Some of the big pharmaceuticals are laying off people left and right, and so you have a wealth of highly educated people,” she said. “There are so many unemployed scientists. Certainly they’d jump at the chance to become a patent agent.”

Send your comments to Doug.Sherwin@sddt.com

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3 UserComments
Tipster 10:48am January 13, 2010

Concerning the comment "If you can (solve) hiring and retention (at the U.S. Patent & Trademark Office), you’re going to get better patents and less trolls.” - you might want to check out the story at Peter Zura's patent blog: http://271patent.blogspot.com/2010/01/one-reason-why-improving-patent-quality.html

staff 7:39am January 13, 2010

“But the problem is a lot of patents that are out there shouldn’t be out there." As to the quality of patents; based on court rulings of the last several years, roughly half of all litigated patents are upheld in court. That's pretty balanced and suggests there is no problem with patent quality. Patent reform is a fraud on America. Please see http://truereform.piausa.org/ for a different/opposing view on patent reform.

Robert C. Leif, Ph.D. 4:54am January 13, 2010

Let the European Patent Office issue the patents. We do not need this duplication of effort. If the US PTO still wishes to do examinations, then since the patent applications are published a group of independent consultants, referees, can determine the state of the prior art.