Patent Pending... and Pending... and Pending

Quality and Quantity

For patents and trademarks alike, pendency is affected not only by the raw number of examiners but by their experience and expertise. Organizations tend to get the expertise they pay for, so funding again is an underlying problem.

“The PTO is understaffed and has a huge turnover rate,” says patent attorney Dorothy Whelan, a principal with Fish & Richardson, PC, a law firm in Minneapolis. In her experience, many examiners are law students who leave the patent office once they get their   degrees. “So you can be bounced from examiner to examiner,” she says. “You feel you’ve reached agreement with an examiner, then you get a new one, and you’re back to square one.” A high turnover rate also leads to a “corps of inexperienced examiners” and constant training issues, Whelan says, which add to delays.

The quality of examinations also affects the quality or validity of patents that get issued. Whelan is among those who argue that the PTO “is letting too many bad patents issue.”

Keller agrees. Examiners aren’t required to have legal training, he says, “but they are supposed to have some expertise in a subject area, like software.” The trouble is, modest expertise, attracted by modest pay scales, is problematic. “Patents deal with innovation, so you need [examiners] who are at the cutting edge. Those people are in demand,” he says.

Keller observes that “bad” patents are a threat whether they are issued to you or to somebody else. On one hand, your company can wind up as the defendant in an   infringement allegation, he says, “where you believe a patent shouldn’t have been issued” to the party suing you. On the other hand, if there is widespread belief that the PTO issues a lot of “bad” patents, then the patents you receive are more likely to be challenged. This leads to uncertainty about “whether and to what extent your patent actually will be enforceable,” Keller says.

Imation’s Levinson doesn’t believe the PTO issues bad patents in great numbers. “Considering the volume of applications they process, I think they do a good job with the ones they issue,” he says. “You hear people say, ‘How could they have issued this one?’ and ‘What were they thinking?’ But it’s rare for me to look at a patent and say, ‘What’s going on here?’”