Last month, the Government Accountability Office (GAO) published a patent quality report finding “persistent examination and quality issues” at the USPTOUnited States Patent and Trademark Office. See also PTO.. The report highlights systemic issues with the USPTO’s patent application review process and puts to bed any doubt that a large swath of patents granted each year likely fail to meet the statutory requirements of being “novel, useful, nonobvious, clearly disclosed, and directed at patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. subject matter.”
While some special interests have tried placing emphasis on the select few potentially-valid patent applications which are wrongfully rejected during initial review, this report rightly puts focus back on the impact of invalid patents which are wrongfully approved. As it notes, “patents that do not meet statutory patentability requirements can inhibit innovation or create costly legal disputes for patent owners and technology users.”
Through focus groups with nearly 50 examiners and a review of various USPTOUnited States Patent and Trademark Office. See also PTO. practices, the GAO found the USPTOUnited States Patent and Trademark Office. See also PTO. prioritizes patent quantity over quality, lacks standardized criteria for measuring quality, and has failed to implement previous reforms. Let’s take a closer look.
“Quantity over Quality” Approach Enables Bad Patents
In FY 2024, the USPTO’s 8,944 patent examiners evaluated approximately 527,000 new patent applications and granted around 365,000 of them—a high volume which naturally creates time and resource constraints. The question is not whether the examination corps will ever err in its determinations, but whether USPTOUnited States Patent and Trademark Office. See also PTO. management is aligning policies and incentives to minimize the issuance of invalid patents.
The answer—according to GAO and the people who are doing the examination—appears to be no. According to the report, numerous examiners expressed the view that “the USPTOUnited States Patent and Trademark Office. See also PTO. places greater emphasis on meeting output goals for the number of applications reviewed over issuing quality patents.”
Those surveyed also noted they receive bonuses for meeting output and timeliness goals, but there are no bonuses for meeting quality benchmarks. As one examiner stated, “[Output] is the name of the game. The quality should be good enough, and [output] should be as high as possible.” In case it isn’t obvious, the report confirms that this emphasis on output “can affect the thoroughness of examinations.”
This “quantity over quality” approach is particularly problematic during prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. searches. These searches explore what inventions and knowledge already exists, to ensure that applications meet noveltyA requirement for patentability, based on 35 U.S.C. § 102(a) of the Patent Act. An invention cannot have been disclosed, offered for sale, or used publicly more than a year before seeking a patent. and nonobviousness criteria. However, with an expanding body of prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. and increasingly complex applications, these searches often take up to half of the 20 hours examiners have on average per application. To make matters worse, examiners noted that many applicants take advantage of limited examiner capacity by making initial applications “so broad they obscure the purported invention,” then file “long and complicated” amended applications, which examiners have even less time to review.
When these issues arise, there is no effective redress. Examiners can neither take more time—they shared it is “generally difficult to get additional examination time needed to adequately review applications”—nor rely on advanced technology to expedite review. Indeed, despite efforts to integrate AI into the examination process, nearly half of examiners reported being “dissatisfied” or “very dissatisfied” with existing prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. search tools and with the report finding that “AI tools currently available prolong examination time and are not yet useful.”
Reaffirming the Importance of the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.
These findings only reinforce the importance of the Patent Trial and Appeal Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.). Far from being a “death squad” for patents, as some critics suggest, the GAO report clarifies the PTAB’s role as a necessary check on an examination corps which is failing to reject weak applications.
Indeed, a USPTOUnited States Patent and Trademark Office. See also PTO. study cited in the report found that when patents are later overturned at the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA., “in most instances the examiner had not seen the prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. brought forth at PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. during patent examination.” Under these circumstances, examiners’ “lack of familiarity with emerging technologies and terminology”—not an alleged “hijacking” of the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. by Big Tech—helps explain why 35% of patents were partially or fully invalidated at the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. in FY 2023.
Stakeholders also noted that “patent examiners have less resources than the outside legal community does,” so it follows that outside patent attorneys can conduct a more extensive and accurate prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. search at the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.. For example, during my time in private practice, it wasn’t uncommon for attorneys to spend fifty, a hundred, or even more hours reviewing prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. for an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. petition. This improved art allows PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges to rule more accurately.
Takeaways for Policymakers
As I’ve previously stated on Patent Progress, “the most immediate way to reduce errors at the USPTOUnited States Patent and Trademark Office. See also PTO. is to give patent examiners the tools and resources they need to make accurate validity determinations.” Yet, despite repeated recommendations from the GAO, the USPTOUnited States Patent and Trademark Office. See also PTO. has gone in the opposite direction, prioritizing the number of patents granted over the quality of patents granted.
The Acting Director’s recent moves to weaken the PTAB—including instituting arbitrary, and likely illegal, discretionary denial procedures—only makes this situation worse. Without robust post-issuance review, more weak patents will remain in force to be leveraged against legitimate innovators. The GAO recognizes as much, noting, “inventors are more likely to engage in costly patent litigation when the USPTOUnited States Patent and Trademark Office. See also PTO. issues patents that do not fully comply with patent law.”
This report offers a clear call to action. Policymakers should reconsider proposals that would further hamstring examiners, loosen patentability criteria, or undermine the agency’s post-grant reviewA procedure by which a third-party may contest issuance of a patent at the USPTO within a short period (9 months) after issuance. Introduced to the U.S. by the AIA. The EPO has a similar procedure. mechanisms. Instead, the USPTOUnited States Patent and Trademark Office. See also PTO. should focus on providing examiners and PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges with the time, resources, and autonomy they need to ensure that patent validity determinations are made accurately and effectively.
