March 28, 2008

IPO Letter Writing Campaign Opposing Applicant Quality Submissions

Patent reform legislation in the Senate (S.1145) may be considered for a vote within the next few weeks. The proposed changes to patent law would be the most significant in more than 50 years. IPO supports some provisions in the bill and continues to seek amendments to other provisions (See Comparison Chart listing IPO Positions). A little-understood provision in the bill would mandate Applicant Quality Submissions (AQS). IPO opposes this provision and has urged its members to speak out against it.

The Provision and its Effects

Section 11 of S.1145 would require nearly all patent applicants to (1) search the prior art and (2) submit a search report and analysis to the USPTO with their applications. We urge all IPO members to contact their Senators within the next two weeks and voice their concerns about this provision.

As it appears in S.1145, if enacted, AQS would:

impose substantial new costs on applicants without meaningful benefits to the USPTO;
create additional opportunities for inequitable conduct claims to be raised at trial;
open up opportunities for litigation claims related to the adequacy of the mandatory search; and
subject applicants to different standards by exempting micro-entities from the requirement.

IPO Resolutions related to this Provision (Adopted, Sept. 9, 2008):

[Inequitable Conduct] -- RESOLVED, that IPO does not support the Applicant Quality Submission Requirement or the Inequitable Conduct provisions of S.1145 and H.R.1908. Further, IPO believes the standards for establishing the defense of inequitable conduct should be raised, not lowered or remain the same, in order to improve patent quality and the interaction between examiners and applicants. The addition of a submission requirement would only heighten the need for such reform. Further, IPO believes that an Applicant Quality Submission requirement is not necessary or good policy, and reiterates that ALL applicants must be equally subject to the substantive PTO rules.

[Micro-Entities] -- RESOLVED, that IPO does not support exempting certain applicants from substantive or procedural requirements of patent law. IPO believes that ALL applicants must be held to the same substantive and procedural standards.

See other IPO Positions.

IPO Call to Action

The message opposing AQS is simple. The provision adds additional burdens on applicants, increases the cost and complexity of prosecution and litigation and fails to provide meaningful assistance to help the PTO do a better job of examining patent applications. It will deter filing of applications and weaken incentives to invent. We know of no group other than the USPTO that supports this proposal, but the USPTO is lobbying Senators very heavily to support it. Senators have not heard enough arguments against the proposal.

Resources for IPO Members

Identify your Senator and retrieve contact information
IPO Letter opposing on AQS
To purchase an IPO Congressional Directory for $20 email mmarcucci@ipo.org
IPO Comparison Chart: House H.R. 1908 vs. S. 1145
Contact for help IPO Staff at (202) 466 2396 or email Dana Colarulli, Director of Government Relations at dana@ipo.org

Return to the IPO Legislative Action Center