tag:blogger.com,1999:blog-2977297931731346524.post197876258633615205..comments2024-03-26T13:13:25.033-04:00Comments on Written Description: New Book on Innovation: Rules for GrowthLisa Larrimore Ouellettehttp://www.blogger.com/profile/18401005012430355377noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-2977297931731346524.post-44474711312806867642011-04-14T00:34:29.238-04:002011-04-14T00:34:29.238-04:00Thanks for the link! As for your question about ho...Thanks for the link! As for your question about how "second pair of eyes" review differs from review by a Supervisory Patent Examiner, I'm not sure, but the PTO seems to treat them as different things in <a href="http://www.uspto.gov/web/offices/com/strat21/action/q1p17.htm" rel="nofollow">this action paper</a> that I found with a quick Google search. It says that "the direct SPE is required to review at least four applications per year for each of their primary examiners," which makes it sound like not every application is being reviewed, though this may be out of date. And the "second pair of eyes" review is described as a "'universal' review of all allowances in Class 705 with each allowance taking about one hour." At any rate, you are surely right that it doesn't make sense to add the second review for all classes without also hiring more examiners so that they are not trying to review in even less time.Lisa Larrimore Ouellettehttps://www.blogger.com/profile/18401005012430355377noreply@blogger.comtag:blogger.com,1999:blog-2977297931731346524.post-53825208947817594152011-04-13T17:07:14.416-04:002011-04-13T17:07:14.416-04:00I mean no disrespect to Mr. Lemley, by the way, it...I mean no disrespect to Mr. Lemley, by the way, it's just he comes at patent policy primarily from a litigation perspective, and I think such policy debates should consider the prosecution perspective as well.<br /><br />I'm sure you can find a more detailed explanation after a bit of Google searching, but a brief statement regarding Director Kappos's plan to revise the count system can be found at http://www.softec.org/blogs/business_and_technology_law/archive/2010/08/25/revolution-in-the-uspto-new-order-and-improved-policies-for-fostering-american-invention.aspx ("Another change instituted by Director Kappos is the revision of the merit system for examiners, also called the the count system, which, under former Director Dudas, promoted churning of patent applications by examiners resulting often in the need to file a number of Requests for Continued Examination and a series of Amendments before a meritorious patent application would be allowed.")<br /><br />I haven't actually read Mr. Lemley's article (as was rather obvious from my initial comment, I suppose), but perhaps you can explain how the 'second pair of eyes' review in the Business Methods Art Unit differs from the usual PTO practice? As I understand PTO procedures, a second examiner -- generally a Supervisory Patent Examiner (SPE) -- reviews all office actions written by the primary Examiners s/he supervises before they are finalized and mailed. I don't know how often review by a SPE results in revision of an Action before mailing, but it's at least a formal possibility.<br /><br />I guess I agree with the notion that review by a second pair of eyes is likely to help reduce the issuance of "bad patents." But adding one more task to the already significant workload of the average patent examiner means that even the second pair of eyes review is likely to be completed under extreme time pressure, thereby decreasing the chances a "bad patent" would be flagged for additional review. <br /><br />Again, I think giving the examiners more time to examine each application would solve most of the problems raised by Mr. Lemley and other commentators. <br /><br />Take the EPO as an example: European examiners don't have the same time constraints placed on them for search and examination as US examiners. As a result, they are generally thought to produce search results of significantly higher quality -- to the point that most patent prosecutors I know (and I've prosecuted biotech patents at two well-regarded AmLaw 100 firms) would routinely advise their clients to select the EPO as International Search Authority (ISA) over any other ISA at the PCT stage (including the US), at least until recent EPC rule changes to the deadline for filing divisional applications in Europe altered the calculus quite a bit.Davidhttps://www.blogger.com/profile/18146366485937442681noreply@blogger.comtag:blogger.com,1999:blog-2977297931731346524.post-16552997666228303622011-04-13T15:04:11.140-04:002011-04-13T15:04:11.140-04:00Thanks for your comment David - it is great to hav...Thanks for your comment David - it is great to have the perspective of a patent practitioner. The specific "second pair of eyes" review Lemley is talking about is the review that was used in Class 705 (business methods) starting in March 2000, where a second examiner must look at the patent <i>before</i> allowance. According to Lemley (p. 374), this was a success in catching "bad patents." The PTO shut down the program in Class 705 recently, but Lemley thinks it should be reopened and expanded to all classes.<br /><br />Lemley also agrees with your point about giving examiners more time - this is part of his "changing examiner incentives" argument, where he thinks changes in workload would be helpful. And it is great to hear that Director Kappos is reworking incentives - I haven't read about this, but it is probably a helpful change. (I don't think Lemley is claiming that these suggestions are new - they are just the suggestions that he thinks are good ideas.)Lisa Larrimore Ouellettehttps://www.blogger.com/profile/18401005012430355377noreply@blogger.comtag:blogger.com,1999:blog-2977297931731346524.post-34266473835830375952011-04-12T19:41:40.125-04:002011-04-12T19:41:40.125-04:00Like most commentary offering specific policy reco...Like most commentary offering specific policy recommendations designed to improve USPTO processes, Mr. Lemley's article would clearly benefit from the perspective of a patent practitioner. <br /><br />As any patent prosecutor could tell you, the PTO already has a version of second-pair-of-eyes review; after issuance of a Notice of Allowance, all patent applications pass through a quality assurance review that in some cases can result in remand to the primary Examiner and the reopening of prosecution. It might be more useful to give Examiners more time to search the prior art and to examine pending applications, however; the time constraints imposed on examiners make it extremely difficult for even the most experienced examiners to do a thorough job, particularly in crowded areas of technology.<br /><br />Also, Director Kappos has started reworking the count system by which Examiner productivity is measured in an effort to alter their incentives. <br /><br />Proposals to adopt a post-grant opposition process modeled at least in part after that of the EPO are not particularly controversial amongst practitioners, especially if adopted along with a first-to-file system. I can't really comment on the potential value of a "tiered review" without more information.Davidhttps://www.blogger.com/profile/18146366485937442681noreply@blogger.com