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Senators' bill seeks to boost patent quality and examination

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Thom Tillis and Patrick Leahy introduced a bill that would evaluate the need for recording examiner interviews, among other measures

Senators Thom Tillis and Patrick Leahy introduced a bill to evaluate and improve patent quality yesterday, August 2.

The Patent Examination and Quality Improvement Act of 2022 would evaluate prior and current initiatives relating to patent quality.

The proposed legislation would require the comptroller general of the US, who heads the Government Accountability Office, to submit a report on patent examination no more than one year after the bill’s enactment.

Such report would evaluate the need for recording examiner interviews through audio files or automated transcriptions.

Jeffrey Morton, partner at law firm Procopio in California, welcomed this proposed measure.

He noted that examiners currently write summaries of interviews but there’s sometimes a disconnect between them and the applicant’s impression of what occurred.

“Having more certainty on how interviews go sounds like a reasonable idea to me,” he said.

Recording examiner interviews could also improve patent litigation.

Matt Rizzolo, partner at Ropes & Gray in Washington DC, said examiner interviews, which are part of the prosecution history, can educate the public and litigators about the scope of claims and what they actually cover.

Litigators would want to know if examiners or applicants made claims during interviews that shed light on what certain terms meant, said Rizzolo.

The comptroller general’s report would also evaluate the need for greater clarity over what constitutes patent quality, the need for certain patent quality metrics, and whether the office should provide additional time for examiners.

It would also assess whether the office needed to assign patent applications to examiners based on their technical backgrounds and the number of applications they had reviewed in similar technology areas.

Additionally, the comptroller general would study evidence of fraud in the application process and include suggestions to address it.

There would also be recommendations for how to improve examiner training, focusing on how examiners should apply laws on subject matter eligibility, novelty, obviousness and enablement, among other things.

Director action

The USPTO director would then be required to develop guidance for patent examiners no more than one year after the comptroller general’s report was submitted.

This guidance would set out how to improve the quality of USPTO patents and more clearly define what constituted a clear and thorough search.

The director would also be required to submit a report to Congress on how the USPTO would improve the technical training of examiners no more than two years after this bill was enacted.

Tillis said the legislation was yet another step in his and Leahy's efforts to strengthen intellectual property rights in the US.

“If the United States is going to continue to be the world’s leading innovation economy, then we have to first make sure our patent system is strong and instils confidence,” he said.

Leahy said the bill followed up on their 2021 hearing on patent quality, which put a spotlight on how US patents drive the economy.

"Unfortunately, though, some are issued by mistake and can cause great expense for unsuspecting Americans and small businesses," he added. "I look forward to advancing legislative solutions that will help make sure that the patents that are issued are valid and to continuing my work supporting American creators and innovators."

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