John Roedel Participates in USPTO Roundtable

John Roedel of Senniger Powers was a participant in a Roundtable discussion of patent quality held in Los Angeles on Monday, May 10, under the sponsorship of the United States Patent and Trademark Office (USPTO). The Roundtable was moderated by Robert Stoll, USPTO Commissioner for Patents, and Marc Adler of the Patent Public Advisory Committee.

The USPTO has proposed certain metrics for evaluation of the quality of patent examination that would be based on review of allowed applications to determine whether allowance is reasonable, and review of finally rejected applications to determine whether the rejection is reasonable under applicable statutory standards. Mr. Roedel commented that the metrics appear useful in helping to assure the reliability of the grant, but that patent quality begins with the originating application and ultimately depends not only on the reliability of the grant, but on whether the scope of protection afforded by the allowed claims is commensurate with the contribution to the art, and whether the system works effectively to disseminate new technical knowledge.

As further metrics, Mr. Roedel suggested: (i) evaluating granted claims to determine whether they encompass obvious variants that would operate on the same principle as the invention disclosed; (ii) if not, determining whether the prior art would have permitted grant of claims covering such alternative embodiments; and (iii) if the prior art would have permitted a broader grant, evaluating whether there is written description in the application supporting such grant. Mr. Roedel acknowledged that evaluation along these lines may not be the responsibility of the USPTO but is still a necessary element in evaluating patent quality.

Mr. Roedel was invited to participate in the roundtable as a result of extensive comments he prepared and submitted in response to the USPTO's Request for Comments on Enhancement in the Quality of Patents, first published in the Federal Register at 74 Fed. Reg. 65093 (December 9, 2009). His comments can be read here in their entirety.