The Crucial Role of Examination Quality in PTAB Invalidation Rates
The Crucial Role of Examination Quality in PTAB Invalidation Rates
“Improving patent examination processes to reduce invalidations”
The debate surrounding the quality of patent examination and its correlation with Patent Trial and Appeal Board invalidations has been ongoing. A recent article by Dr. Ron Katznelson titled “Fallacy Dispelled: Invalidation Rates of Adjudicated Patents Convey Nothing About Quality of All Issued Patents” challenges the notion that PTAB invalidation rates are a reliable indicator of overall patent quality. Katznelson argues that there is no direct relationship between the invalidation rates and the quality of patents examined at the U.S. Patent and Trademark Office. However, this essay offers a counterpoint, asserting that examination quality is undeniably a central factor influencing PTAB invalidations. This article explores why examination quality remains a significant concern and why its impact on patent invalidation rates cannot be dismissed.
The Defective Patent Examination System
Patent examination is intended to ensure that only valid patents, which meet the criteria of novelty, non-obviousness, and utility, are granted. However, the process is not foolproof. Examination quality—essentially the ability of patent examiners to conduct thorough prior art searches is a critical factor in determining whether a patent will survive challenges in PTAB reviews. Examinations that fail to adequately uncover relevant prior art or overlook crucial pieces of evidence are likely to result in the granting of weak patents. These weaknesses often become evident when patents are subjected to an inter partes review, a process where third parties can challenge the validity of granted patents. One of the key factors influencing IPR outcomes is the quality of the underlying evidence that was considered during the examination process.
The PTAB Kill Rate: Evidence of Examination Deficiencies
The PTAB has a high invalidation rate, with an 84% “kill rate” for patents subjected to inter partes review. Some dismiss this statistic as not being directly linked to the quality of examination, but the evidence speaks otherwise. A more telling figure, disclosed by the USPTO in response to GAO-25-107218, reveals that 93% of the grounds for PTAB decisions relied on prior art that was not presented to the patent examiner during the original prosecution. This statistic is a powerful indicator that patents often lack critical evidence during examination, leading to their invalidation in subsequent PTAB reviews. The fact that the USPTO fails to identify relevant prior art during patent examination means that many patents granted by the agency are potentially invalid from the outset. This pattern points to a systemic flaw in the examination process that allows patents to be granted without a complete and thorough search for prior art.
The Search Strategy Deficiency
A patent examiner’s ability to identify relevant prior art is foundational to ensuring the quality of a patent examination. Under the Code of Federal Regulations (37 CFR §1.104), examiners are required to conduct a “thorough investigation of the available prior art relating to the subject matter of the claimed invention.” The Manual of Patent Examining Procedure further elaborates that examiners should conduct searches that cover the invention as described and claimed, identifying the most likely areas to find relevant prior art. However, the reality is that many examiners’ search strategies fall short. Over the past 15 years, I have reviewed approximately 40 examiner search strategies, and consistently, these searches exhibit significant deficiencies. Examiners’ searches are often haphazard, lack clear methodologies, and miss key references that should have been identified early in the examination process. These deficiencies in the search strategy are not the fault of the individual examiners; rather, they reflect a broader systemic issue with the way the USPTO conducts examinations. The absence of thorough searches and well-constructed search strategies contributes directly to the high rate of PTAB invalidations.
Lack of Focus in Examiner Search Strategies
The lack of a clear and replicable search strategy is a crucial concern. A thorough search, as defined in the private sector, is a detailed investigation aimed at identifying all relevant prior art, particularly the primary reference, which documents what a Person Having Ordinary Skill in the Art would know. A primary reference is the one that teaches the most features of the invention, and failing to identify it during examination significantly increases the likelihood that the patent will be invalidated in an IPR. Despite the availability of advanced search tools and databases, patent examiners often fail to conduct thorough searches that identify the primary reference. The inability to replicate a search strategy further highlights the inadequacy of the USPTO’s examination process. To ensure patent quality, the search process must be methodical, focused, and capable of identifying the key references that will determine whether a patent is valid.
Examination Quality: A Root Cause of Invalidity
Katznelson argues that the PTAB invalidation rate does not directly correlate with examination quality, claiming that the high rate of invalidations is instead due to erroneous allowances or an inherently flawed system. However, the evidence suggests that the core issue lies in the quality of the examination process itself. Patents are often invalidated because the examination process fails to identify the prior art that would have rendered the patent claims unpatentable. The failure to identify relevant prior art is not merely an oversight but rather a reflection of an outdated and ineffective examination model. The transition from paper-based to digital systems has contributed to a decline in institutional knowledge among examiners. In the past, examiners were experts in the art they were assigned to, having gained expertise through repeated manual searches of prior patents. Today, however, the reliance on digital search tools and Boolean algorithms has replaced the deeper understanding of prior art that once characterized the examining corps. This shift has led to a degradation in the quality of patent examinations and a greater likelihood that invalid patents will be granted.
The Need for a More Robust Search Strategy
To address the systemic flaws in patent examination, the USPTO must adopt a more robust approach to prior art searches. This includes emphasizing the importance of conducting thorough searches that focus on the inventive concepts and ensure that primary references are identified before a patent is granted. Additionally, there should be a concerted effort to evaluate and improve the search strategies used by examiners, ensuring that they are methodical, replicable, and capable of identifying all relevant prior art. Examination quality cannot be improved in isolation; it requires a holistic approach that includes better training for patent examiners, improved search tools, and a commitment to a higher standard of examination. The GAO, in its reports on patent quality, has touched upon some of these issues but has yet to fully address the core problem of evidence quality in patent examinations. It is time for the GAO to return to this issue and investigate it more thoroughly.
In conclusion, examination quality is not a fallacy; it is the primary factor that influences PTAB invalidation rates. The evidence is clear that a significant number of patents are invalidated because they were granted without a thorough examination of prior art. The failure to conduct comprehensive searches and the lack of a well-defined search strategy are at the heart of this issue. To strengthen the patent system, the USPTO must focus on improving examination quality by adopting more effective search strategies, ensuring that patents are thoroughly vetted before they are granted. Only by addressing these systemic issues can we expect to see a reduction in the high rate of PTAB invalidations and restore confidence in the quality of issued patents.
