Congress Presses USPTO To Address “Patent Thicket” Problem

Law Firm Newswire



Salem, MA (Law Firm Newswire) September 21, 2022 – In June, a bipartisan group of six U.S. senators wrote to the director of the U.S. Patent and Trademark Office (PTO), asking the PTO to combat “patent thickets,” at the examination stage.

One way to address the patent “thicket” problem is to stop incentivizing PTO examiners into allowing these thickets to exist in the first place. The current PTO examiner compensation program works on a “Count” system which was implemented to encourage a thorough substantive examination early in the application process. The PTO Director could change the examiner Count system (and the examiner review and compensation program), such as by:

– Changing the definition of a First Action On the Merits (FAOM) and an ALLOWANCE for examiner review and compensation purposes and considering examiner incentives based on further substantive search and examination in Continuation applications (and more time for conducting examinations in Continuation applications).

– Consider examiner compensation programs with reduced or no consideration under a Count system, and modernize the system to account for changes in the examiner workforce and workplace.

Capuano IP is a micro-boutique intellectual property practice that provides expert IP and litigation services to clients in the chemistry, pharmaceutical, and related life sciences.