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the public. What further changes in operations may be needed could just as
well be done within the Department of Commerce.

Id at p. 4.

PTO.

H.R. 6933 was reported without the provision relating to the independence of the

E. Lessons From History

The "Taft Commission" report and "Kintner Report" are both lengthy documents. Both contain discussions of many problems and recommendations for addressing them. The problems range from institutional to operational minutiae. The discussion of these reports here should not be understood to mean that none of these recommendations have been adopted or that nothing has changed within the PTO in the last 80 years. The point is that fundamental causal problems, such as subordination of the PTO, have been ignored. Rather treating symptomatic problems has been the rule.

The Patent Act of 1836 was a response to the public outcry that too many invalid patents were issued. The "Taft Commission" was responding to the same complaint, to the point that it recognized the affirmation need to defend the examination system against calls for a return to the registration system. No mention is made by the commission of patent pendency time. The Commission focused on the quality of work done by the Office. By the time of the "Kintner Report" the PTO was malfunctioning to the point that pendency time became an issue. That symptom has been the focus of treatment since.

Since 1962, striving to issue patents quickly has been an accepted goal of the PTO. In 1982, the production goal of issuing patents in 18 months has been an official Commerce Department directive. Instituting "compact prosecution" and eliminating conferences before appeals from examiner rejections successfully speeded up the patenting process. Imposing production quotas on the Board of Patent Appeals and Interferences successfully reduced a mid 1980's backlog. Now the recognized and only measure of success for the PTO, for the examiners, and for the PTO appellate review process is successfully meeting production quotas.

The purpose of the patent laws is to both reward inventors by granting patents to them and benefit the public by stimulating innovation and the advance of technology. The PTO provides services to the inventor segment of the public. In 1966, the President's Commission recognized that experience and expertise of users of the patent system should be made part of the process of preserving and improving it. The Commission recommendation that a Statutory Advisory Council be established to institutionalize that resource was ignored.

Lacking any established role or legal standing to affect positive change, the public in 1980, did what it has been forced to do in the past complain about PTO performance to

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Congress. This led to introduction of the Independent Patent and Trademark Office Act and congressional hearings.

The events of 1980 and the aftermath are entirely consistent with the history of how the Patent Office (now PTO) problems are not resolved. Six former Commissioners unanimously urged Congress to do what the Taft Commission first recommended in 1912 make the Office an independent agency. The former Commissioners all urged a fixed term of office for future Commissioners so that management could be improved as the Kintner Commission recommended. As in the past, expert advice was ignored in favor of the status quo.

A.

The Users' Perspective On Current
Quality Issues In the PTO

Patent Operation

In March of 1991, the AIPLA surveyed its membership on issues relating to user perceptions of the quality of the PTO's patent operations. Almost one thousand (988) patent practitioners responded. 60% of the respondents were in private practice and 40% were in corporate practice.

In several categories, respondents were asked to identify trends in the operation of the PTO over the past decade. The majority of respondents were highly experienced practitioners: over 55% had more than 15 years patent prosecution experience, while 42% reported 21 or more years experience in patent practice before the PTO. Respondents represented all principal areas of PTO operation: approximately one-third each dealt with the PTO in the chemical and mechanical fields, with one-fifth being in electrical arts.

The survey was divided into five substantive areas: searching capabilities, APS, the patent examining corps, PTO financing, and PTO management. The full survey is in Appendix II.

1) PTO Searching Capabilities

By a margin of 3 to 1, respondents indicated that they typically resort to use of additional searching resources, outside the contents of the PTO classified search files, in order to make a reasonably complete evaluation of the state of the art. Among corporate practitioners an astounding 87% of respondents indicated that they typically resort to non-PTO resources to gain a reasonably complete picture of the prior art. For biotechnology practitioners the corresponding figure is an even more incredible 96%!

The survey also indicated a growing inadequacy of the PTO searching resources over the past decade to provide reasonably complete access to the prior art. For example, among patent practitioners, 73% report making more use of additional searching resources now than was the case a decade ago, while 79% report making more use of additional searching resources compared to five years ago.

Very few respondents (12%) agreed that the scope of the PTO classified search files is adequate. Most respondents expressed the view that additional (or more complete) materials were needed in the following areas:

foreign patent information generally (96%).

Japanese patent information particularly (93%).

European patent information particularly (94%).
non-patent publications (93%).

Respondents felt that the quality of searching in the PTO was impeded by more than the deficiencies in the PTO search files. More than three-quarters of respondents disagreed with the proposition that examiners are able to devote adequate time to the searching element of patent examination.

In conclusion, practitioners surveyed disagreed that the PTO today provided better assessments of the scope and content of the prior art than was the case ten years ago -- by a margin of 3 to 1.

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Respondents generally concurred on the benefits of APS: 86% expressed the view that APS could meaningfully improve the PTO searching capabilities by eliminating the problem of "missing patents" prevalent with paper-copy searching files.

However, grave concerns were expressed about the value of any APS project which did not provide access to foreign patents and non-patent publications. Over 93% indicated that APS must provide foreign patent information; 91% indicated that non-patent publications were essential. Similar concerns were expressed concerning the phase-out of the existing paper search files -- even if APS is made available to the public. By a margin of over 3 to 1 practitioners opposed the phase-out of the existing search files.

The value of APS is clearly cost-dependent in the era of a user-funded PTO. Respondents indicated support for APS limited to U.S. patents or inclusive of foreign patent information to the following extent:

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Support existed among respondents for APS only if it can be deployed, operated, and maintained at a cost of between $200 and $300 per patent application, depending on the scope of the system. For the current APS, users appear willing to support annual expenditures for

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APS of $30 to $40 million per year, or an aggregate of $450 to $600 million over the entire 15 year life of APS.

Given the cost-sensitive nature of the support for APS, the respondents strongly supported (84%) a cost-benefit analysis be completed before additional money is spent on deployment. To summarize, three-quarters of the respondents supported the proposition that further deployment of APS not proceed if the PTO cannot demonstrate productivity gains and/or quality gains which will cost-justify the expense.

3) Patent Examining Corps.

Ninety percent of respondents agreed that the turnover in the patent examining corps has an overall negative impact on the quality of search and examining activities. In the critical area of biotechnology practice, this figure rises to over 94% of respondents.

When asked whether patent examiners are able to devote adequate time to individual patent applications to conduct an effective search and produce well-reasoned official actions, 72% of respondents disagreed. On the specific issues of the "production quotas," which effectively limit the time available to search and examine, 85% of respondents indicated that the quota system adversely impacted on quality.

A similar 77% disagreed that the 18 month pendency goal of the PTO has had a positive effect on the quality of PTO operations.

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Practitioners responding to the survey indicated by a margin of 10 to 1 support for additional PTO funding devoted to quality. Support was also expressed for modest increases in PTO fees, provided that inventors could be assured of high quality search and examination. The following table indicates the level of support for increased fees to achieve quality enhance

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