New USPTO Prosecution Pilot for Underrepresented Inventors Source of Mystery Letter

Also: USPTO "neutral" on whether inexperienced applicants should consider consulting patent practitioners and additional “robust & reliable” guidance coming soon

Mystery letter

Late last month, grizzled patent practitioners were left half amused, half bemused by the appearance of a new “Welcome Letter” in some of their clients’ application file wrappers. The form letter (pictured below) was issued about a week after an Office action and seemed to have been intended to provide advice to first-time, pro se applicants. It left the practitioners with lots of questions.

Why was this letter for pro se applicants issued for applications for which they were practitioners of record? Why did the form letter state that “the Office action includes a ‘rejection’” even though not all Office actions include rejections? Were those just oversights? Most perplexingly of all, if the letter was going to provide all of this advice to a pro-se applicant, why didn’t it advise the applicant to consider consulting a patent practitioner? Seasoned patent attorney Tony Gayoso, who did insurance defense work earlier in his career, noted that “[i]t’s akin to your insurance company recommending that you settle with them and don’t bother talking to an attorney.” 

Then the same sources that first told me about seeing the letter indicated that they haven’t seen it since. Was it issued in error in the first place? Did the USPTO change its mind?

On Friday, I talked to a USPTO official familiar with the letter to try to get answers to these questions.

New USPTO pilot

It turns out that the mystery letter was issued as part of a new USPTO pilot for underrepresented inventors. Although the USPTO announced last year that a “Welcome Letter” will now be sent with a filing receipt as part of its commitment “to expand the innovation ecosystem,” this particular pilot has not been previously announced or reported.

The goal of this new pilot is to see if sending an additional letter after a first Office action on the merits helps applicants stay in the process. The letter is currently being sent to a target group of individuals identified by the USPTO as pro se, women, under-resourced, and microentity applicants. A control group of the same type of applicants is currently not receiving the letter. The USPTO plans to compare whether receiving the letter makes a difference with regards to doing more interviews, contacting tech centers, persistence (filing amendments), efficiency, and success (obtaining a patent).

Expanding the innovation ecosystem

The USPTO official told me that the pilot was spurred by data that showed that certain groups of individuals were more likely to abandon the patent prosecution process. Although the USPTO did not conduct any new analysis on the subject prior to starting this particularly pilot, it is part of the USPTO’s broader, ongoing effort to increase the number of women, minorities, and veterans named as inventors on U.S. granted patents.

The announcement mentioned above cited a paper, “Try, Try, Try, again? Persistence and the gender innovation gap” by professors Gauri Subramani, Abhay Aneja, and Oren Reshef, that noted that “85% of patent applications in the United States include no female inventors” and “[r]oughly half of the overall gender gap in awarded patents during this period can be accounted for by the differential propensity of women to abandon applications.” A recent article co-authored by USPTO’s Chief Economist Andrew Toole made the case for why increasing the number of women and minority inventors could lead to a substantial increase in America’s GDP.

Flashback: the broader initiative was first championed at the USPTO by previous Director Andrei Iancu when he helped start the National Council for Expanding American Innovation (NCEAI). The current administration continued those efforts after first announcing that it was renaming it to the Council for Inclusive Innovation (CI2).

USPTO’s “neutral” on patent practitioners

To my surprise, the USPTO official indicated on Friday that failing to advise applicants in the letter to consider consulting a patent practitioner was NOT an oversight.  Instead, the official said that the USPTO is “neutral” on the subject of whether someone who’s not familiar with the patent application process should consider consulting or using a registered patent practitioner.

I couldn’t quite get an answer regarding whether that was a topic that was considered when the letter was drafted but the official said that the USPTO is open to considering that in the future depending on how this pilot with the letter pans out.  Instead, the official said that the focus of the letter was letting inexperienced applicants know about the services that are provided by the USPTO.

Is the USPTO trying to do too much?  

Prior to this letter, the USPTO has been beset by controversies over the ANPRM proposals and its various IT issues.  And, as I mentioned last week, the administration as a whole has also remained under fire for its proposals to waive IP rights.

The one bright spot for the USPTO has been its work on AI. In that realm, the USPTO was enjoying another major success with the release of the widely praised guidance for AI-assisted inventions. However, instead of basking in that, the USPTO decided to start this new pilot followed by Section 103 guidance explaining how the 17-year old KSR decision should be applied by examiners.  

Professor Dennis Crouch noted that the guidance “suggests that the office is looking to make non-obviousness a larger hurdle via increased flexibility . . . Unfortunately, as I note below, the guidance has some major problems that will likely lead to greater confusion” (emphasis added). If anything, overall, examiners currently rely relatively liberally on KSR to justify obviousness rejections.

Normally, the USPTO issues such guidance for examiners to follow when a significant decision first comes out or has identified a significant problem with examiners not being provided sufficient guidance to properly perform their jobs. With one minor exception, the new 103 guidance only cites cases that were decided in 2021 or earlier.

So, I asked the USPTO official whether anything in particular spurred the 103 guidance being issued at this point in time? The USPTO official responded that it was part of the strategic plan on “robust & reliable patents.” However, neither the USPTO “Strategic Plan” from 2023 nor the RFC on “Robustness and Reliability of Patent Rights” mentioned KSR or focused on any way on the subject of the 103 guidance. Another source at the USPTO confirmed that there were previous internal discussions related to the subject but it still wasn’t clear why it was released now.

Was there any particular data showing that there was an issue? No, the USPTO official told me and again cited the stated goal of “robust & reliable patents.”

Additional “robust & reliable” guidance coming soon

So then I asked if we can expect any other such guidance coming yet? Yes, the USPTO official told me, within the next week or so there should be other such guidance issued. Much of the RFC on “Robustness and Reliability of Patent Rights” focused on “Support for Patent Claims” under 112(a) and “non-statutory double patenting.” So, if the additional guidance actually does stem from that, it will likely focus one of those areas.

So, is the USPTO trying to do too much?  

I posed this question directly to the USPTO official. The official responded by noting that 14,000 people work at the USPTO and many of them are looking at ways how the USPTO can do better and optimize processes in lots of different areas, including IT, policy, and inclusive innovation.

Divergent views: The question remains whether it’s a good idea for the USPTO to encourage Americans to pursue patent protection. I’ve heard shared skepticism from those who normally hold very different views about the role of patents and the state of America’s patent system. The inventor community thinks that the USPTO should first make sure that inventors are able to successfully enforce their patents if they’re going to encourage people to pursue patent protection. Others range from being skeptical of the idea that an individual inventor obtaining a patent is some “good” that should be pursued to thinking that - either way - its not the role of the USPTO to encourage that.

Eli’s view: I’ve met plenty of seasoned innovators who understand the patent system better than the average patent attorney. I’ve personally learned a lot from them. However, even they, when they could afford it, universally decided that it was strategically better for them to rely on experienced patent practitioners to successfully navigate the patent office. The USPTO has now taken a different position on the subject.

If the goal is for these individual inventors to just obtain patents without planning to legally enforce any related rights, it probably does make sense to help them to save the money and effort relying on experienced patent practitioners might require. However, if that is the case, the USPTO should be clear - like a good patent practitioner would be with a potential client - about what an average pro se inventor can realistically expect from obtaining a single patent on his own.

Nonetheless, the USPTO should be lauded for continuing Iancu’s efforts for expanding American innovation. And, if an underrepresented inventor applies for a patent, it’s only right for the USPTO to let the inventor know about all of the tools available. The new USPTO letter seems like a positive step from at least that perspective.

Do you know the real reason why the 103 guidance was released? Are you an in-house counsel who thinks I’m missing an important IP story? Are you Morgan Chu and want to share the story about how you ended up representing Elon Musk v. OpenAI?

Please email me at eli@VoiceOfIP.com or find me on Signal at eli.92.