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patents having a very short prosecution time, well, there is just no way to search the records properly. You have left out those two very important sources of prior art.
I could try to clarify that a little bit further.
Senator Hart. I think you have spelled it out understandably in here. I am following it.
Mr. WEISSMAN. Well, in chemical cases, for instance, we rely on chemical abstracts to do the searching in the chemical literature. In other words, suppose a case is allowed to go out to patent in 18 months. Now presently the indexes which we use to search the chemical literature, those indexes come out a vear to a year and one-half later. The abstract itself is of no value. You can't consider that. You must have the index. In other words, we will just barely get the index by the time the patent is issued so there is no way to search that.
Now on the foreign patents, it just takes a little time until they are shipped over and until somebody looks them over-especially if they are not in English because you have to translate-and it take time because you have to get them up to the examiners and they have to put them into the files. It all takes time. It is very haphazard, and with this shortened prosecution time we almost have a guarantee we will never see recent foreign patents. So the greatest evil of shortened prosecution time is it totally eliminates very important areas of prior art.
Now I will just briefly summarize these other sections. There are certain things the Office does. We have a manual on patent examination procedures. We have a rule of practice that says for instance, when it comes to an interview, that after the interview, a complete written record is supposed too be placed in the file wrapper so anybody can see what transpired. But yet we have what we call an office form POL-327 and I quote: “All of the claims being allowable. prosecution on the merits is closed in this application and the Notice of Allowance or other appropriate communication will be sent in due course, in view of” and then it lists the following: "telephone interview” and “personal interview.”'
Now, when that letter goes out, when that 327 goes out, the case is allowed so the attorney couldn't even get the written record in, or there is no necessity to get that written record in of what transpired as a result of that telephone interview even though the rules of practice definitely require that.
Of course what is even worse is that if it gets into a court contest and a judge sees that, then I don't think he is going to like the idea at all that happened. In other words, as a result of that telephone interview a case could be allowed, and yet the record would be totally devoid of the slightest indication of why it was allowed.
The next section I will just briefly go over. I feel that the Office just isn't using its personnel in the best possible manner. I think they could be a little bit more, well, I think they could be a little bit more efficient in the way they use that personnel. I will just leave it at that.
We went into the five sections that you had discussed previously. Senator Hart. Yes.
Mr. Weissman. I have mentioned others just very briefly. I don't know if you want any comment on that at all except for, well, I would like to comment on a couple of things. There are some things in there which are really of interest
. Your bill now requires that a primary examiner fully set forth in the record the reason for everything he does, and that is extremely interesting because the way things stand right now, Senator,, no examiner ever need explain why he allows an application. There is just nothing that requires it, and that is the reason we get a black eye so much in court. An examiner might have a very good reason for allowing it, but there is no way for him to present it. However, when it gets into a court the judge looks at it and is completely mystified. The judge can't figure out what happened. And your bill would require that everything that a
. primary examiner does be written in a form that the judge likes to see, you know, that no matter what he does, he sets forth findings of fact, conclusions of law, et cetera. The judge will be able to review it intelligently and see what happened. Today I believe that is one of the biggest defects in file wrappers, because no examiner ever needs to explain why he allows a case. If he tries to object to allowance he is in trouble. He has to explain. But of course when a patent gets into court there is a bad thing, because the judge would like to know what the basis was for allowing it and most of the time he just can't figure it out. As I said, the examiner might have very good reasons but they are not in there.
Now, this chapter 12, section 132(c) and subsections 1, 2, 3, and 4 very clearly spell out this must be done. Of great interest is the fact that subsection 4 also says that it would require a narrative report of all meetings between an examiner and an applicant or his representative. That relates back to what I was just discussing previously, where you could have a telephone conversation and no report of it. This provision of the bill would completely eliminate that situation.
Well, I think I have pretty well covered it. As I say, the paper itself is pretty lengthy.
Senator HART. Mr. Weissman I think that the record has benefited from having your testimony, given the background and experience from which you speak. As one interested in this particular bill I appreciate very much your individual support for it, and your comments on the five specific items that we wanted direct focus in these hearings to be on.
PREPARED STATEMENT OF MILTON WEISSMAN
My name is Milton Weissman. I am a primary examiner in the United States Patent Office, having close to twenty-nine years of experience in patent examination, and over two years of experience in patent classification and retrieval systems. I am also Editor-In-Chief of the “Journal Of The Patent Office Society,” a position which I have held since April 1967. Previously, I was the Assistant Editor of the Journal, a position to which I was appointed
in February 1963, so that I have over ten years of editorial experience in patent and related matters.
The opinions expressed in this statement are solely those of the author, and are not to be construed as having been adopted by any organization of which he is a member.
II. PATENT INVALIDITY: A CRISIS FOR THE U.S. PATENT SYSTEM Almost all recent discussion, either written or oral, dealing with the subject of the invalidity of patents is based on the premise, either stated expressly or implied, that the courts are applying a standard of patentability which is far too strict. It is high time indeed that the opposite side of the coin be closely scrutinized. The conduct of those responsible for the issuance of patents should be questioned, and this is true regardless of whether or not one agrees that the courts are applying a tou strict standard of patentability.
Do the officials of the Patent Office really care about the validity of the patents which are issued from their agency, as long as the production goals which they set for the patent examiners concerning the disposal of patent applications are met? The official position of the Patent Office is that they desire the issuance of patents of the highest possible validity. But, in view of their actual conduct concerning production goals, this position must be viewed as at least open to question. As long as the officials of the Patent Office demand greater production of disposals each year, even though the number of examiners remains about the same and the amount of prior art to be searched increases ominously each year, it is difficult indeed for anyone with an objective viewpoint to be convinced that they are paying anything more than lip service to the concept of the highest possible patent validity.
Nor are the others involved in the issuance of invalid patents to be consid. ered entirely blameless. Do patent attorneys and their clients, the inventors, really care anything about the validity of the patents issued to them, as long as they can obtain these patents (which may or may not be valid)? Here again all concerned take the position that they only want patents of the highest possible validity to be issued. But again, in view of their actual conduct in the prosecution of patent applications, their strict adherence to this viewpoint is open to question. Is it too much to ask, for example, that they at least disclose to the Patent Office the best prior art of which they are aware? Then the examination process could be focussed on the issue of whether or not patentable subject matter has been disclosed, in view of the examiner's and appli. cant's best prior art, which is the best possible way to buttress the presumption of validity accorded to patents by statute.
Furthermore, the attitude of the patent bar toward any proposal for altering the present patent system, even though expressly designed to aid in the goal of having patents of greater validity issued by the Patent Office, can at best be described as merely lukewarm. Is it really too much to ask that they put aside self-interest, at least to some extent, to pursue a goal of having patents of the highest possible validity issued by the Patent Office?
The Patent Office has always had a tremendous problem, i.e., insufficient time in which to perform a proper examination of a patent application, with. out any solution therefor. Thus, note the following statement by Mr. Donald Brown, then Vice President and Patent Counsel of Polaroid Corp., which appeared at pp. 266-67 of “Hearings before the Subcommittee on Patents, Trademarks, and Copyrights of the Committee on the Judiciary, United States Senate, 84th Congress, 1st Sess. (1955).
"We believe that the present shortage of Patent Office personnel makes it impossible for the examiners adequately to search the art if the work of the Office is to be kept on a reasonably current footing. For example, it is our common practice, even in fields in which we are reasonably expert, to search the art before introducing a new product commercially. These searches, which are usually limited to United States patents of the last 15 or 20 years, may average 4 to 5 days of 1 man's time. An exhaustive literature search, such as we make if we are charged with infringement of another's patent, may run from 10 to 20 days of 1 man's time or even longer. As opposed to this, it is our understanding that the Patent Office's examiners, on the average, can devote not more than one-half day to the preparation of each Office action. ... We do not believe that it is possible, even for a skilled examiner familiar with
the art, to make an adequate search and to consider a new specification or a fairly complete amendment within a period of 3 or 4 hours. . We feel that today much of the technical literature is not searched by the Patent Office examiners. We know that our own searches invariably develop references which we believe are closer than those developed by the Office.”
Since at that time a patent application normally received 3 Office actions, the last one being final, it received about 12 hours of examination by the Patent Office. From those figures it should be quite evident what basically is the cause of patent invalidity. It is extremely interesting to note that at the present time patent applications receive the same inadequate type of examination.
Patent applications are presently filed at the rate of about 90,000–100,000 per year. To keep the backlog at the same level at least this number of patent applications must be disposed of annually by the Patent Office, i.e., by allowance or abandonment. Because of various factors such as leave, etc., assuming that an examiner works 1650 hours per annum, a typical GS-13 examiner without signatory authority is expected to obtain 110 disposals per annum. This averages out to 15 hours/disposal. The situation is far worse with respect to a typical GS-15 examiner, having a full signatory authority, who is expected to obtain as high as 147 disposals with an average of 11.5 hours/ disposal. Any comment that this represents adequate examination of a patent application is woefully inadequate.
III. THE U.S. PATENT OFFICE: ITS ROLE IN FOSTERING PATENT INVALIDITY Much has been written recently concerning the causes of patent invalidity, but practically nothing relates to the role of the Patent Office in fostering patent invalidity. Only a few scattered comments can be found in the legal literature, such as the following:
"[The Patent Office has got to be the sickest institution that our Government has ever invented. It is just as far as I can see an attritional war between the patent applicant and the patent examiner who apparently got paid on the piece work for how many patents they could put out." Judge Miles W. Lord, September 8, 1971, United States v. Charles Pfizer & Co., Inc., et al, (Tetracycline civil damage suit), 4–71 Civ 435 (D. Minn.).
What exactly is going on in the Patent Office that would cause a judge in a Federal District Court to place such a vitriolic comment in the record of a legal controversy
It should hardly surprise anyone that the Patent Office, operating under present practices and procedures, is at least one of the prime causes for patent invalidity. There is also hardly any question that some of the practices are a result of the demands made upon the Patent Office with respect to decreasing, or at least maintaining at the same level, the backlog of unexamined applications. But the question here is simply whether or not there can be any justifiration for the practices and procedures employed by the Patent Office in order to meet the demands made, regardless of what they may be, when it is glaringly apparent that they must inevitably result in a flood of invalid patents. Exactly what are the practices and procedures, and why must they foster patent invalidity ?
A. The Quota System What is involved in any quota system is always a subordination of quality to quantity in order to meet some production goal. This is true even on an automobile assembly line. But the quota system in the Patent Office goes far beyond this. It is not merely a question of subordinating quality to quantity in order to meet a production goal. What is involved is a total obliteration of the concept that there can even be a requirement of quality, regardless of how low it may be, in the examination of patent applications. It is hardly any wonder that examiners refuse to become concerned with the quality of the examination they perform, when the result thereof will be punishment, not reward. How can such a system do anything but foster invalid patents? 1. The numbers game
The quota system has produced many strange results. Examiner productivity is measured in terms of the number of cases he allows, the number of cases which become abandoned (these two together are considered disposals) and,
strangely enough, the number of new cases he acts on. Abandonments can hardly be controlled. The prime factor in productivity is therefore allowances, because they are easiest. The temptation for an examiner to allow a case. when he must meet a production goal, is almost unbearable. The validity of any patent issued under such circumstances is highly suspect. But there is even a greater evil involved. If an examiner allows a new case on the first action, he then gets double credit, i.e., one credit for acting on a new case and one credit for allowing the identical case. In other words, he need work only half as hard as any other examiner and attain the same production rating. If an examiner is not meeting his quota because he is low on allowances and low on abandonments, he can then resort to the expedient of making up the deficiency, at least temporarily, by acting on a sufficient number of new cases. Normally speaking, an action on a new case is the most time consuming one, involving an understanding of the specification and claims, searching the prior art, writing on Office action, etc. If an examiner resorts to this expedient in order to meet his production quota, the time he spends on each new case is severely curtailed and the quality of the examination thereof must inevitably be lowered. 2. Superficial treatment of the most complex cases
Another equally strange result of the quota system is that the most complex cases receive the least thorough prosecution, a practice which must inevitably result in the issuance of invalid patents. How could such an obviously destructive practice arise, and, even further, how can it be permitted to continue unabated? The answer to these questions is simple; it is the result of a quota system administered in a manner which borders on absurdity.
The key here is complexity, i.e., obviously some cases require more time for examination than others. But the simplest way to administer a quota system is to make the absurd assumption that all cases are of the same level of complexity. Thus, in any examining group all cases are assumed to be of the same order of complexity, even if more than fifty examiners are involved. Cases involving nothing more, for example, than making a mixture of metals useful as an alloy (Exhibit A) are deemed to be as complex as cases involving the production of synthetic diamonds (Exhibit B). An example of other equally complex cases is the production of exotic boron containing compounds (Exhibit C).
If the officials of the Patent Office were to be questioned on this issue, they would undoubtedly answer that different arts have received different compler. ity factors. However, these factors appear to be purely mythical because no examiner has ever been told exactly what is the complexity factor for his par ticular docket. Even if such complexity factors did exist, they certainly did not arise as the result of any legitimate statistical study. It is not too well known, but they arose as the result of politics. The officials having the most influence got the best deal they could, i.e., an assignment of a complexity lerel as high as possible, for the examiners under them so that they (the officials) personally could benefit by having a lower case load assigned to them. In the not too far distant past all examiners (Office-wide) were adjudged to have cases of exactly the same complexity, and their efficiency was measured by the number of Office actions they produced per week. There is nothing to lead one to believe that the present system really differs in essence from the former system. 3. Misuse of computer resources
Perhaps the strangest result of the quota system is the use of extremely expensive computer time to keep production records on examiners which are complete to the nih degree. Production records show, for well over 1000 examiners, such diverse factors as the number of new cases acted on, the number of allowances, the number of abandonments, etc. They also include such other esoteric items as balanced disposals, hours per balanced disposal, and so on, ad infinitum. What possible justification can there be for employing valuable computer time to compile this mountain of production records, essentially nothing but a mass of trivia, and not of the slightest consequence when pursuing a goal of processing patent applications to produce patents of the highest possible validity.
In view of the urgent necessity of finding some way to employ computers to aid an examiner in the examination of patent applications, the spectacle of