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From: "Budens, Robert" To: ; Sent: Tuesday, July 17, 2007 11:44 AM Subject: POPA Concerns re S. 1145

Ms. Davies and Ms. Triplette,

The Patent Office Professional Association (POPA) represents the more than 5,000 patent examiners and other patent professionals at the U.S. Patent and Trademark Office. As such, we have a keen interest in legislation that affects the USPTO and its employees.

It has come to our attention that the 2nd Managers' Amendment passed by the Committee at last Thursday's markup, would authorize the USPTO to require all patent applicants to submit an "Applicant Quality Submission" containing a prior art "search report and other information and analysis relevant to patentability"

While POPA is not opposed to the concept of the Applicant Quality Submission, we do have serious concerns that this authority would allow the USPTO to effectively substitute the Applicant Quality Submission for an independent search by a USPTO examiner by simply taking time away from examiners to perform searches. The Applicant Quality Submission is nothing more than a new name for the "patentability report" that USPTO management has been trying to get in place for several years so that they could outsource or offshore the search and free up examiner time so that the examiner could then move more cases and reduce pendency.

We have serious concerns about who does the search of a patent application and under what conditions. Our tradition in this country is to have examiners perform the search because they are independent of applicants and other commercial interests and, as Federal employees, have the best interests of the public at heart. It has been proposed that searches could be outsourced and potentially offshored and, further, that perhaps it could be done by patent applicants entirely. We think the traditional approach is by far the best for the patent system.

Congress agreed with us and, as a consequence, in 35 USC 41, as amended by Section 801(c) of Public Law 108-447, Congress decided to require a pilot with significant safeguards before the agency could transfer the search to an outside entity. Some of the most significant safeguards are found in what is currently 35 USC 41(d) including that the search be performed by U.S. citizens without direct or indirect conflicts of interest. The provisions of 801(c) also allowed the agency to refund any search fees charged when an applicant submitted a search.

We are concerned that the Patent Reform Act as amended would allow the agency to evade Congress' requirement for a pilot program with its accompanying safeguards by merely reducing the amount of time allotted to examiners to search and, in essence, requiring examiners to rely upon the "Applicant Quality Submission" as the source of prior art upon which patentability is determined.

Congress is, in essence, ceding the decision of who performs patent searches to the Executive Branch. Who performs a search has enormous consequences for the patent system. Our experience with current submissions of prior art by applicants is that patent examiners routinely find better and more relevant prior art. We think it would be a mistake to rely on applicants, who have a clear financial self-interest in the results.

At the moment, it appears that the easiest fix would be to add language to the Reform bill to treat Applicant Quality Submissions the same as current submissions of prior art, unless they go through the same pilot and the agency applies the same safeguards to these submissions as are required for submissions by a "qualified search authority" as that term is defined in Section 801(c) of Public Law 108-447.

Our suggestion would be to add a sentence to the end of Section 123, "Additional information," of the Manager's Amendment that would read as follows:

"Submissions of prior art by applicants or others, shall not be relied upon in whole or in part, as a substitute for an independent search by a USPTO examiner except after conducting a pilot and assessment as provided for in Section 801(c) of Public Law 108-447."

We hope this helps clarify our concerns. We would be happy to talk with you further about this issue. Please feel free to contact me.

Best regards,

Robert D. Budens, President
Patent Office Professional Association
Work: (571) 272-0897
Home: (703) 823-6717
Cell: (703) 615-7789