Editor’s note: The independent inventor community is an industrious American subculture that has produced everything from the Segway to Snuggies. Yet according to a recent study by Auburn University business professor Paul Swamidass, the U.S. Patent & Trademark Office can be hostile to those who file patent applications pro se, that is, without an attorney.
Officials at the USPTO have seen his study. In fact, an official at the USPTO alerted us of its existence. A former patent examiner told Inventors Digest that while some examiners enjoy working with inventors, most “grit their teeth when they see a pro se application hit their desk” because those applications typically are so poorly written.
To be sure, patent applications are complex. “People can’t write their own house-closing contracts or divorce papers,” the former examiner said, who works with the USPTO and didn’t want his name used. “It’s a real art. I wish it were different. It’s never going to be uncomplicated.”
The following is an abridged version of Paul Swamidass’s article. A full report appears in the April 2010 print edition.
By Paul Swamidass
The lonely toil of the individual American inventor has given the nation brilliant technological breakthroughs and universal acclaim for its innovativeness.
Many such inventors go on to become jobs-creating entrepreneurs.
Because of this, policy makers must watch closely whether the U.S. patent system treats the pro se patent applicant – someone who files without an attorney – with appropriate efficiency and effectiveness. In a system predominantly crafted by legal professionals, equal treatment becomes especially true.
My recent study shows that less-than-serious examination of pro se applications at the U.S. Patent and Trademark Office is resulting in “irrational rejection” of worthy pro se applications. The study argues that “irrational rejection” is broadly the cause for the rejection of many good pro se applications. In short, the experiences of patent attorneys and pro se applicants are polar opposites.
The USPTO collects and publishes statistics and analyses about patent applications and issued patents, but it does not collect data on pro se applications. This is unfortunate – we are kept in the dark concerning pro se patent applications and examinations. But that’s not to say the USPTO lacks requirements for handling pro se applications.
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Many may be unaware that the USPTO’s Manual of Patent Examining Procedure is friendly to pro se applicants. It requires the following seven actions from examiners of pro se applications:
1) Draft one or more claims when justified
2) Indicate such claims will be allowed if incorporated
3) Do not stop with bare rejection of claims but office actions should be constructive
4) Offer definite suggestions for correction
5) Indicate the desirability of an interview
6) Note in office actions that certain features have not been claimed
7) State dependent or canceled claims will be allowed if written as independent claims
The USPTO needs to treat the pro se citizen-applicant in a manner consistent with its own policies.
I filed my patent application with the USPTO on Oct. 18, 2007. An experienced patent attorney at a large Atlanta law firm read the entire application and refined the claims for a fee. I filed a simultaneous pro se application under the Patent Cooperation Treaty for the protection of worldwide rights.
Each of the three USPTO office actions, one interview with the examiner and one office advisory are summarized below. I evaluated each for compliance with the seven USPTO requirements for pro se applications.
- First Office Action – July 2, 2008. All 19 claims were rejected; this office action did not comply with any of the seven requirements.
- I requested an interview with the examiner. The interview was cordial, and the examiner helped draft a revision to the only independent Claim #1 to overcome his objections in the rejection letter. The interview complied with requirements – but it should be noted that an uncompensated attorney accompanied me to observe.
- Second Office Action – Jan. 5, 2009. The examiner issued a final rejection of all 18 claims including the amended Claim #1. This was puzzling. This final rejection was accompanied by the assertion that it was anticipated by another, abandoned U.S. patent application. This after the examiner had stated in the summary of our interview, “that the suggested changes to the claims would overcome at least the relied upon art and devises positioned as speed bumps.” This office action did not comply with any of the USPTO’s requirements for pro se applicants. On March 3, 2009, I submitted a response to the final rejection.
- Office Advisory – April 2, 2009. The USPTO confirmed the final rejection of all 18 claims. The advisory did not comply with any of the pro se requirements. I amended Claim #1 with cosmetic changes and filed a Request for Continued Examination (for a $405 fee) on April 5, 2009, with 18 claims.
- Office Action – May 27, 2009. I received a non-final rejection of all 18 claims in response to my RCE. The rejection states, “Claims 1-18 are rejected as being unpatentable over Solon in view of Murray (U.S. Patent 5,582,490).” Murray’s invention is a complex machine that cuts grooves along the sides of roads. It’s a baffling reference to cite independently or in conjunction with another prior art as a cause for rejecting my invention. This office action did not comply with any of the USPTO’s pro se requirements.
- On Aug. 27, 2009, I submitted a revised application with Amended Independent Claim #1 and without three of the dependent claims.
- Notice of Allowance – Oct. 8, 2009. I received my patent, with the acceptance of all 15 claims as is. At no point before the final acceptance did any of the prior office actions indicate that one independent and any one of the 14 dependent claims – essentially the same as the original – would be allowed.
The references supplied by the examiner were weak, irrelevant or non-analogous. This motivated me to keep prosecuting the application without abandonment. But the delay caused my international rights to lapse. Most pro se applicants might have chosen premature abandonment, which should be a matter of concern to policy makers.
At my request, A.J. Gokcek, a registered patent attorney and the associate director of intellectual property of the Office of Technology Transfer at Auburn University, studied the application and office actions and offered the following comments:
- 1. The Non-obviousness Issue: Murray and Solon references provided by the examiner teach away from each other; a person having ordinary skill in the art would not have combined the two.
- 2. Objective Indicia: Due to prohibitive costs of Murray-style solution, thousands, if not millions of miles of U.S. roadways have no rumble strips. The following must be considered in the context of this unmet need. Prior art is inadequate or fails to address the problem using above-the-pavement solutions, which Murray cannot and does not address.
- Non-analogous Art: Murray may also be considered non-analogous art. An ordinary rumble strip designer making above-the-pavement rumble strips would not require knowledge of the Murray reference. Murray should not have been used to make an obviousness rejection.
- Additional comments: The repeat of the advice to seek a registered patent attorney in Office Action dated 5/27/09 is unwarranted, whether intended or not, it could have the effect of placing the inventor on the defensive, and attempts to lay the responsibility for the prolongation of the prosecution entirely upon the shoulders of the applicant.
My case brings to the surface some issues about the examination process that may cause the pro se to abandon an application prematurely:
- When rejections are accompanied by inappropriate references.
- When claims are rejected repeatedly without addressing potentially allowable claims.
- When faced with erratic examinations from rejection to rejection.
- When the examination moves away from the core substance of the invention.
- When the examiner moves the target from examination to examination.
- When the examination does not conform to the spirit of USPTO’s own pro se application requirements. In the above case, there were 36 instances of non-compliance and only six instances of compliance; the latter when the attorney was present at the interview.
Examiners include the following statement in office actions sent to pro se applicants: “Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of the patent is largely dependent upon skilled preparation and prosecution.”
Does this USPTO-approved statement provide an excuse or cover for the examiner to avoid sincere evaluations? Does it give an excuse to the examiners to blame all the problems with the examination on the pro se applicant? Could it hide the examiners’ excessive dependence on applicants’ attorneys?
Here’s what I recommend:
1. Training of examiners: The USPTO needs to develop a cadre of examiners who work only with pro se applicants by training them for working exclusively with pro se applicants.
2. Comply with the rules: Examiners should offer pro se applicants suggestions for (1) revising claims, (2) adding new claims, (3) canceling or disallowing dependent claims that may be allowed if written as independent claims, and (4) schedule an interview.
3. Collect data. Capture, analyze and publish data on pro se applications, including feedback from pro se applicants concerning their experiences with examiners.
4. Form a committee. Form a committee of articulate and impartial former pro se applicants to give input to the USPTO.
The bad news is that the patent-reform discussions in Washington do not address the challenges facing pro se applicants. But the good news is that, after seeing a copy of my full study, the USPTO has expressed interest in making some changes.