Results
of the Post Grant Outcomes Pilot
Guest
blog by Chief Judge for the Patent and Trial Appeal Board David Ruschke and
Commissioner for Patents Drew Hirschfeld
As
part of the USPTO’s ongoing Enhanced Patent Quality Initiative, in April 2016 we launched the Post Grant Outcomes
Pilot, focused on
pending patent applications that are related to issued patents undergoing an America Invents Act (AIA) trial
proceeding before the Patent Trial and Appeal Board (PTAB). We’d
like to report that the Post Grant Outcomes Pilot has succeeded in making
examiners aware of patents related to applications they are examining that are
involved in PTAB trials, and in turn has facilitated the timely and effective
examination of applications.
AIA trial proceedings contain prior art and arguments
that might be highly relevant to the patentability determination of related applications
currently under examination. This pilot was intended to help examiners harness the art
presented during AIA trials to enhance examination of a related application, so
they could reach more expeditious decisions on patentability.
During the pilot, we notified examiners via email when they had an
application related to an AIA trial, and we streamlined access to the contents
of the trial by pinpointing for examiners the most relevant documents. We then surveyed
the examiners to gain detailed feedback.
The survey results showed that our examiners found the PTAB
information—especially the initial petition (including the prior art
citations), the PTAB’s institution decision, and any expert declarations—to be
highly useful. We also found that 46% of
the examiners referred to at least one reference cited in the AIA trial
petition during the examination of their own case, either by citing it in a
rejection or as pertinent prior art. If
an examiner did not use or cite the prior art from the trial, it was most
likely because the claims were different between the “parent” and the “child”
case, the examiner disagreed with the AIA petitioner’s analysis of the prior
art and/or claims, or the examiner was able to find better art.
To further facilitate the process, in August 2016 we deployed an
upgrade to examiners’ desktop application viewers which allows automated access
to the contents of related AIA trials, including access to the entire file, and
any cited prior art.
Our next objective with regards to the post grant outcomes process
is to identify examination best practices or deficiencies that we can address
through additional examiner training. To
accomplish this, we are currently analyzing data gathered about the AIA trials
with respect to prior art searching and claim interpretation, and are also working
to thoroughly analyze how PTAB trials impact related applications.
Our final objective is to provide examiners with a periodic review
of post-grant outcomes focused on Supreme Court, Federal Circuit, district
court, and PTAB decisions that relate to their specific technological area. It is our hope that by providing this
information, examiners will gain a better understanding of the current state of
the law and what happens to a patent after it leaves the USPTO.
We
are dedicated to ensuring examiners have all pertinent information, especially
post grant outcomes information, easily and readily available, in order to
issue the highest quality patents possible and enhance patent quality overall. Based
on the program’s initial results, we can already see that our examiners are
benefitting, and we will continue to identify additional ways to improve our processes.
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