Takeaway: The USPTO needs to improve patent examining by applying a different examination criteria.
The USPTO’s idealized system for processing patent applications has yet to be achieved because patent examiners, desiring to dispose of patent applications quickly, tend to give unreasonably broad interpretations to the claim terms in order to allow them to quickly find a reference that can serve as a basis for a rejection.
Although examiners are instructed to give claims their broadest reasonable interpretation pursuant to MPEP section 2111, from our experience, it appears that the examiners may be ignoring the specification and using the broadest possible interpretation of claim language so as to encompass more prior art.
Furthermore, patent examiners do not appear to adhere to MPEP 904.03, which states that “[i]t is normally not enough that references be selected to meet only the terms of the claims alone . . . but the search should, insofar as possible, also cover all subject matter which the examiner reasonably anticipates might be incorporated into applicant’s amendment.” (Emphasis added.)
To truly implement a proper system, the patent examiner should be incentivized to uncover the best prior art reference(s) available in the First Action on the Merits (FAOM) so that a second search would not be necessary based on any amendments. Therefore, if the invention is unpatentable, then the FAOM should demonstrate as much, not the second or any subsequent office action.
One way to implement a better system would be to change the count system. The current count system does not incentivize examiners to conduct the best search in advance of the FAOM. Under the current model, the examiner can receive a maximum of 2 counts on an original case. This is accomplished by issuing a FAOM (1.25 counts), issuing a final office action (Final) (0.25 count), then issuing an allowance or an abandonment (0.5 count).
Under this system, it appears the examiners are incentivized to issue a Final prior to an allowance. In fact, an examiner may conduct an inadequate search, knowing that after a response to the FAOM, a second search can be done, and a Final issued, so that the examiner receives the extra 0.25 count.
We have advocated this approach to the USPTO in a recent article in the Berkeley Technology Law Journal.
