Patent Administration: Current Issues and Possibilities for Reform (CRS Report for Congress)
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| Release Date |
June 6, 2002 |
| Report Number |
RL31438 |
| Report Type |
Report |
| Authors |
John R. Thomas, Resources, Science and Industry Division |
| Source Agency |
Congressional Research Service |
Summary:
The United States Patent and Trademark Office ("USPTO") examines patent applications to
determine whether the subject matter claimed within those applications is sufficiently inventive to
merit the award of a patent. The environment in which patent examination occurs has become
increasingly challenging. The USPTO is facing an escalating rate of patent application filings as
well as applications of increasing technical complexity. Other potential concerns include budgetary
constraints and the retention of personnel with appropriate technical and legal qualifications to
perform patent examination tasks.
Out of recognition of these challenges, the administrative procedures through which the USPTO
conducts patent examination have been subject to renewed public dialogue and congressional
interest. Legislation pending before the 107th Congress would introduce reforms to patent
administration. Should Congress further consider this issue, USPTO practices may be reviewed with
an eye towards their capability for maintaining acceptable levels of patent quality within current
resource constraints.
Congress may conclude that current USPTO practices provide an appropriate level of scrutiny
of patent applications. In the event that reform is contemplated, however, widely circulated
proposals and the practices of other leading patent-granting agencies, notably the European Patent
Office ("EPO") and the Japanese Patent Office ("JPO"), suggest the latest thinking on patent
administration reform. One set of reform proposals involves augmenting the responsibilities of
patent applicants. Although inventors who seek patent protection are responsible for preparing an
application, they are currently not required to perform a search of public domain information to
determine if their technology is sufficiently inventive to merit a patent. Some proposals would
mandate that applicants perform such a search, or at least state whether they have done so. Others
would require applicants to distinguish more carefully their inventions from the state of the art.
A second group of reform proposals involves an assessment of the contributions members of
the general public might make within an optimal patent examination regime. Interested third parties
might be invited to comment upon pending patent applications. Alternatively, they could invoke
administrative patent revocation proceedings at the USPTO known as "oppositions."
Finally, Congress may wish to consider more general workload reduction proposals. Currently
the USPTO automatically subjects each submitted application to a detailed substantive examination.
Other possibilities include deferral of examination or the automatic registration of every submitted
application. The USPTO might also rely upon the results of foreign patent offices in reaching its
own patentability decisions.
