Adler on Patent Quality: Corporate Filers Should Conduct Pre-Filing Search

According to a presentation by IPO President and Rohm and Haas Chief IP Counsel Marc Alder to the Trilateral Users Conference in Washington, DC, on "Quality Patent Examination and Prosecution," in order to ensure quality examination corporate filers should start with a quality search

• Corporate filers should conduct a pre-filing search citing the most relevant art to the examiner. Applicants should avoid flooding the examiner with cumulative prior art references.
• Office should fully evaluate this and any other prior art brought to its attention to build a reliable and complete record of examination.

and "end with quality claims:"

• Corporate filers will measure the quality of granted claims based on claims that:
  – clearly and thoroughly protect all aspects of invention embodied in newly commercialized product or process and defend strategic goals.
  – recite the uses of invention in all appropriate streams of commerce.

Alder also asserts that "patent offices will grant high-quality patents if they:"

• Insure an independent search and examination
• Do not depend solely on applicant’s search or analysis
• Share results with other patent offices in real time
• Shift examiner incentives toward quality and away from goals based purely on production
• Encourage pre- and post-first action interviews between examiners and applicants
• Apply improved quality metrics
• Rely on meaningful measures that can improve the end result. Share measures with other offices and the public
• Develop resources to manage new technologies
• Train examiners in new technologies with the aid of private industry Patent

Call me skeptical, but I would rather know what percentage of Rohm and Haas's patent budget is actually dedicated to comprehensive prior art searching, and how those search results are presented to the persons who actually make the initial decision on whether to file the patent application.

• Does Rohm and Haas utilize a dedicted patent searching process or organization?
• Are invention disclosures and search results reviewed in detail by those who will actually have to write the resulting patent applications, before a decision is made on whether to file?
• Does that anlaysis go so far as to prepare a draft caim for business value justification before the disclosure is sent (to an outside law firm) for preparation and prosecution?
• Or is the process mostly left to attorneys with other obligations, who, in turn, carefully avoid these significant up-front commitments of time and resources by relying hapless inventors for their information?
• How does his organization draw the line on such "analysis paralysis" over these relatively small and discrete expenditures, without simply foisting the same problems onto outside counsel and/or the USPTO later in the process, where the issues are much more resource-intensive to address at both the individual and systemic levels?
• What meaningful measures does his organization use to improve the end result?
• Is there accountability for failure to obtain the initially justified scope of protection?
• And just how does Adler prevent his own business organization from obsessing over the same two internal production metrics (numbers filed and cost) as everyone else?

Now those are some questions that would would make for an interesting presentation, and a lightning rod for debate!

Get more of Adler's dos and dont's for patent quality here.