Solveig and I spent a couple of hours yesterday with Lee Hollaar, Professor of Computer Science and patent guru. He is skeptical that much good will come out current patent reform efforts, which reflect the lawyer driven vision that the good society is the one that maximizes the number of procedures and opportunities for comment.

Instead, he thinks attention should focus on the internal incentive structure of the USPTO:

Changing the examiner productivity measure

But the most important thing the USPTO can do does not need statutory changes or even new rules. It can bring its current system for determining examiner performance into the 21st Century. There is no need to continue the current coarse-grained “count” system, which may have made sense when records were kept with paper and pencil, but has no justification when it is possible to gather statistics to the level demonstrated in this notice of proposed rulemaking.

The patent statutes already recognize that applications with more claims require more work, as do longer applications. That is why there is a surcharge added to the normal application fee for claims above three independent and twenty total claims, and for applications longer than 100 pages.

But, while the Office collects additional revenue to support the additional work, it does not translate that into additional credit for the examiner performing that work on the particular application. The examiner receives the same credit for the disposal of a short application with few claims as for the applications with a large number of claims that the proposed rules try to address. That makes no sense.

It has been said that the measure determines the system, and that is certainly the case here. Professor Wegner, in his comments for the companion to this rulemaking proposal limiting the number of continuations correctly notes that some examiners will force the filing of a continuation in order to increase their performance measure on a particular patent. Conversely, not considering the number of claims examined in the performance measure leads to ll-conceived proposals to limit the number claims even when added fees are paid to cover the added time needed.

At the same time it reforms its internal performance measuring system, the Office should askCongress for authority to charge for other things within the control of an applicant that take additional examiner time, such as voluminous information disclosures that are more calculated to bury the examiner in hopes of a quick initialing of the sheet for a reference so that it can’t be used in later litigation. The Office should even consider recommending to Congress surcharges for particular technologies, such as business method patents where the “second set of eyes” program has improved examination quality but at a clear increase in cost.

For more on this issue, see Office of the Inspector General, Dept. of Commerce, USPTO Should Reassess How Examiner Goals, Performance Appraisal Plans, and the Award System Stimulate and Reward Examiner Production (2004).