Robert Budens, president of the Patent Office Professional Association (POPA), dubbed the study's authors - professors Mark Lemley, Chris Cotropia and Bhaven Sampat - "biased" and said that their paper asks the wrong fundamental question.
"What they should be asking is whether the art that the examiners applied was as good as or better than the applicant-submitted art," said Budens in an interview with Managing IP.
|
Robert Budens |
The study found that examiners usually cited art they searched for and found, rather than art submitted by applicants, using data from the prosecution history of a random sample of 1,192 ultimately issued patents.
But Budens said that the art submitted by applicants is often irrelevant.
"I do think it's fair to say that examiners put more faith in their own searches, but there are reasons for that," he said.
An examiner himself for many years, Budens added: "I know from my experience that there was very seldom applicant-submitted art as good as mine, and I only lost one case before the Board [of Patent Appeals and Interferences]. So I'll let the facts stand for themselves."
While Lemley admitted it would be ideal to study whether the art cited in rejections was the most relevant art submitted, as Budens suggests, he claimed that "there is no way to assess that empirically; but to the extent that we could, we did".
Lemley said that the study's finding that even art found by other patent offices was usually not cited by examiners belies Budens's claim that examiner-discovered art is cited more often because it is simply better.
Said Lemley: "We focused on a subset of art that should be considered really good, because it was found in the EPO by another examiner. Most lawyers you ask would say that the EU examiners do a better job of finding art than US examiners. So I think it's particularly interesting that US examiners don't do more piggybacking on that."
Budens was not surprised by the finding. "We're looking at different laws than applied in foreign applications; they're searching for different things. We still always look at that art though," he said.
Asked if this inability to rely on foreign examiners' prior art searches could have negative implications for worksharing efforts, Budens acknowledged that it might.
"It doesn't render worksharing useless, but I don't think it's as advantageous as some would believe," he said. "As long as the USPTO is holding examiners responsible for all prior art, I'm going to continue to do my own searches."
Both Budens and Lemley do agree that refining inequitable conduct laws could improve examination quality. Budens admitted that examiners rarely have enough time and are often flooded with irrelevant prior art.
" I think some of the data [in the study] may be accurate," said Budens. "I know we've been inundated with prior art from applicants since the McKesson case. But that doesn't mean we don't go through it," he continued.
In McKesson Information Solutions v Bridge Medical (2007), the Federal Circuit made it easier to prove inequitable conduct, causing applicants to increasingly err on the side of caution when submitting prior art.
While the study dismisses the so-called flooding effect as the explanation for its repeated claim that "examiners effectively ignore applicant-submitted art", Lemley conceded that the situation might improve if inequitable conduct requirements are limited.
"I would have said it was a bad idea a few years ago, but after the data we found in this paper I think it might help," he said.
The issue of inequitable conduct will be considered by a full panel of the Federal Circuit in November in Therasense v Becton Dickinson .
Lemley said he has already achieved his aim for the paper, which is to spark discussion.
"Having this conversation is my goal. I hope that policy makers and scholars will pay more attention to the inner workings of the PTO, because we can change substantive law all we want, but it doesn't matter if examiners don't listen."
