GAO Makes Two Recommendations for Improving Prior Art Searches

The General Accountability Office (GAO) issued three reports this year regarding the U.S. Patent and Trademark Office (USPTO). In August, we summarized the first of these reports, Patent Office Should Define Quality, Reassess Incentives, and Improve Clarity. Last month, we provided a summary and analysis of the second report, Patent Office Should Strengthen Search Capabilities and Better Monitor Examiners' Work. This month we wrap up the trilogy with a summary and analysis of Patent Office Has Opportunities to Further Improve Application Review and Patent Quality.

Purpose of the Third Study: The House Judiciary – that is considering several patent “reform” bills – asked the GAO to develop information that it could provide as testimony before the committee. The Judiciary Committee specifically wanted to know what the challenges are that patent examiners face in reviewing applications and issuing high-quality patents, and what steps the Patent Office can take to improve patent examination and the quality of granted patents.

We put “reform” in quotations in the previous paragraph because attempts to weaken the U.S. Patent system by agents for “Big Tech” have cleverly disguised these efforts as “reform” when their sole purpose is the exact opposite. We do not in any way mean to impugn the efforts or motives of the General Accountability Office, an independent agency with an impeccable reputation. We do, however, question the motives of the anti-patent members of the House Judiciary Committee.

Survey of Patent Agents: The GAO surveyed a cross section of USPTO patent examiners and received an 80% response rate. The agency also used input from Patent Office documents, relevant patent-related laws, and interviews with USPTO officials and what the agency calls “knowledgeable stakeholders” – patent agents, patent attorneys and patent litigators, but no actual inventors.

The survey of patent examiners included many questions, but the most telling data is from the question regarding if patent examiners believed they have sufficient time to complete a “thorough prior art search” in their examination of a patent application. Figure 1 shows the results from that question.

The survey showed that:

  • 24.8% reported that they had “much less time than needed”
  • 42.2% reported that they had “somewhat less time than needed”
  • 21.7% reported that they had “about as much time as needed”
  • 6.8% reported that they had “somewhat more time than needed”
  • 3.3% reported that they actually had “much more time than needed”

Our Analysis of the Survey: We are not surprised by the results. Two-thirds of the patent examiners surveyed believed that they did not have sufficient time – either had “much less” or “somewhat less” time than needed – to complete a thorough prior art search. What employees in any organization are going to admit they have more than enough time to complete the work they have? Virtually every employee is going to claim that he or she does not have enough time. So we have to take the survey results with a grain of salt.

It would have been more effective if the GAO had conducted an independent study to determine what the steps are in a prior art search, and how much time an effective prior art search should take; or they could have observed the work of a sample of patent examiners to see how efficient they are in their prior art search activities. Also, patent agents and patent attorneys (or their staffs) regularly conduct prior art searches. It would have been informative and – we suspect – enlightening to find out how long a prior art search in the private sector takes.

GAO Conclusions: The GAO reports that patent examiners face a “variety of challenges” when reviewing patent applications with the goal of issuing “high-quality patents” and that prior art searches are the most time-consuming task that a patent examiner has. The GAO concluded that the search tools the USPTO provides to patent examiners may be insufficient, and the clarity of patent applications and the amount of time that is allotted for an examiner to complete his or her work affects an examiner’s ability to ensure that patents that are issued are high-quality.

The General Accountability Office acknowledged that the Patent Office is taking steps to address the challenges patent examiners face in reviewing applications in such a way that they issue high-quality patents – most notably through the USPTO’s Enhanced Patent Quality Initiative – but the GAO believes that opportunities exist for further improvement. Here are the agency’s observations:

  • The USPTO is taking steps to strengthen the monitoring of patent examiners’ work, but the Patent Office still faces limitations in assessing overall patent quality – including the thoroughness of the patent examiners’ prior art searches – because the USPTO has not established a consistent definition of patent quality or guidance as to what constitutes a thorough prior art search for different technologies.
  • While the USPTO has an overall strategic goal that includes optimizing patent quality, the Patent Office has not developed specific goals and performance indicators related to patent quality and prior art search improvement.
  • The USPTO has not comprehensively assessed the time patent examiners need to perform a high-quality patent examination – including a thorough prior art search – and has not fully assessed the effects of other agency incentive policies on patent quality. For example, the Patent Office recently adjusted the time allotted for patent examiners to review patent applications in some technologies, but it has not assessed the time needed for a thorough patent examination in all technology areas.
  • The GAO estimates, based on its survey, that 70 percent of patent examiners say they do not have enough time to complete a thorough examination given a typical workload. Additionally, most of the stakeholders the GAO interviewed said that the time pressures that patent examiners face is one of the central challenges to ensuring patent quality; however, the USPTO has not analyzed the effects of its production-based incentive policies on patent quality. According to federal standards for internal control, operational success requires providing personnel with the right incentives for the job. Without comprehensively assessing the time needed to conduct a thorough examination or the USPTO’s current incentives, USPTO cannot be assured that it's time allotments and incentives support the agency’s patent quality goal.
  • Patent examiners reported that they had difficulties with the amount and relevance of the prior art references provided by patent applicants. The GAO estimates that 82% of patent examiners “sometimes,” “often” or “always” encounter patent applications with what they considered an excessive number of submitted art references.

GAO Recommendations: For all of the problems and shortcomings it found, the General Accountability Office came up with two recommendations in its third report.
1. The USPTO must consistently and clearly define patent quality and what a thorough prior art search is for different technologies, and it must establish goals and indicators to monitor the work of patent examiners.
2. The USPTO must assess the time allotted for a patent examination and analyze the effects that other Patent Office employee incentives have on patent quality.

Upon receipt of the report, the Patent Office reported back that it “concurred” with the GAO’s recommendations.

Our Analysis of the Recommendations: The GAO’s recommendations are thoughtful, reasoned and practical. There needs to be a determination of exactly how long a thorough prior art search should take. It should be noted, however, that the recommendations presented by the GAO in all three of its reports do not support any of the anti-patent bills currently before Congress.