In a notice published in the Federal Register (81 Fed. Reg. 16142) last month, the U.S. Patent and Trademark Office announced that new patent quality metrics were being designed for use in FY2017 and that the Office was seeking comments from stakeholders regarding the new metrics.  The new patent quality metrics will focus on the correctness and clarity of Office actions, which will be assessed through the use of a standardized review form.  The new metrics and review form are being developed as part of the Office's Enhanced Patent Quality Initiative.

The Office's notice provides a brief overview of the development of patent quality assessment at the USPTO, noting that prior to FY2005, "the USPTO quality metric was solely directed to the correctness of the final output of the examination process that would result in a patent: An allowed application."  From FY2005 to FY2009, the Office employed two quality metrics, evaluating the correctness of an examiner's determination of an application's allowance of an application and the quality of the actions taken during the course of examination.  In FY2010, these two metrics were modified to also focus on final Office actions and the quality of non-final Office actions during prosecution, with quality analysis performed on randomly selected actions by the USPTO's Office of Patent Quality Assurance (OPQA).  OPQA reviewers examined selected actions to determine whether all required claim rejections were properly made in compliance with U.S. patent law.  From FY2011 to FY2015, the Office employed a Composite Quality Metric, which provided a single comprehensive metric representing the overall state of patent examination quality, and which was composed of seven total factors: (1) The final disposition review, (2) the in-process review, (3) the first action on the merits (FAOM) search review, (4) the complete FAOM review, (5) the external quality survey, (6) the internal quality survey, and (7) an aggregation of five factors from the USPTO's Quality Index Report (QIR).  The Office's QIR metric uses a statistical analysis of occurrences of certain types of events (e.g., reopening after final Office actions, consecutive non-final Office actions, consecutive restriction requirements) based on data available through the USPTO’s Patent Application Locating and Monitoring (PALM) system.

Since the launch of the USPTO's Enhanced Patent Quality Initiative, the Office has been focusing on improving the internal metrics used to evaluate patent examination quality and on improving the communication of patent examination quality measurements to the public.  As part of the Initiative, the Office has proposed new metrics for use in FY2017.  The new metrics will continue to assess the correctness of an examiner's determinations in a given Office action, with increased attention on assessing whether the examiner clearly set forth his or her reasoning in a given Office action.  In addition, the Office will continue to review randomly selected actions for improperly made rejections and for failure to make rejections where required by statute, as well as assessing the propriety of the examiner's search, any interpretation of claim language under 35 U.S.C 112(f), any determination that an action is made final, any restriction or election of species requirement, the sufficiency of the recordation of any interview, and the propriety of any reasons for allowance of an application.

In assessing the above factors, the Office will employ a single standardized review form, the Master Review Form, which will contain criteria for recording the correctness for each of the substantive patentability requirements, and for recording the clarity of each of those decisions and the supporting rationales set forth in the Office action under review.  A list of the correctness and clarity items in the draft proposed version of the Master Review Form can be found here.  The Office's notice requests feedback from stakeholders regarding the elements of the proposed Master Review Form.

In addition to feedback regarding the Master Review Form, the Office is also seeking public feedback regarding the following questions:

(1)  Whether the USPTO is moving in the right direction by choosing to focus on two core metrics: A work product metric representing correctness of actions, and a clarity metric that more thoroughly explores the sufficiency of the examiner’s reasoning in an Office action.
(2) Which of the proposed clarity and correctness review items in the proposed standardized Master Review Form should be used as the key drivers of patent examination quality metrics?
(3) How can patent metrics best provide objective, rather than subjective, measurements of quality- related features in clarity and correctness reviews?

The Office's notice indicates that written comments from stakeholders must be received on or before May 24, 2016.  Comments should be sent by e-mail to: QualityMetrics2017@uspto.gov or by regular mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, marked to the attention of Michael Cygan, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy.  The Office requests that comments include the name and affiliation of the individual submitting the comments and an indication of whether the comments represent the views of the individual or the individual's organization.  Submitted comments will be made available here.