USPTO and DOGE: The Elevated Importance of Private Sector Patent Searching

In light of DOGE’s actions at the USPTO this year, and the subsequent abrupt changes at the USPTO, the growing importance of private sector patent searching has become more prevalent than ever. Private sector patent search firms are uniquely positioned to have a big impact on patent rights. In fact, this is clearly stated by Acting Director Coke, during the CSIS conference this year:

“First, we are encouraging the innovation community to help strengthen patent rights. Among other tools the ... AIA provides the opportunity for third parties to submit prior art to the USPTO when patents are under examination. This helps solve the problem of patent examiners not having the best information to determine whether an invention is new and not obvious, and who knows better whether an invention is truly new than other inventors in the same field.

The AIA provides another opportunity: through post grant reviews ... third parties can challenge issued patent claims on any statutory ground within 9 months of issuance. The use of this tool can also help improve the durability of patent rights.

I hear that such early challenges are too difficult because so many patents-- tens of thousands every month and hundreds of thousands--issue every year. But there are businesses whose entire mission is to scour issued patents for commercial opportunities and to review issued patents to determine if and how they impact these companies’ freedom to operate. Slice these patents by subject matter, and the number is not so great.”

Acting Director Coke essentially touts 3rd party preissuance submissions and post-grant reviews executed by professional, private sector patent search firms, as a way to strengthen patent rights by putting forth the best prior art.

I have spoken previously about the differences between professional private sector patent research, and USPTO Examiner searching. The differences can be quite significant, even at a fundamental level, in terms of time allotted to search.

Case in point: The Government Accountability Office (GAO) recently released a study on the USPTO, with the most eye-opening finding below:

"93% of the [PTAB] grounds studied relied upon at least one prior art rejection that was not before the examiner during prosecution."

This is rather alarming. This means that in 93% of PTAB cases, the petitioner raises new prior art in 93% of cases. At SPSG, we work on a lot of invalidity searches, and to be frank, this percentage sounds about right.

On top of the foregoing, DOGE has also eliminated key Examiner prior art search tools, such as Dialog, Proquest, and at least temporarily STN/Scifinder. DOGE has also limited / eliminated Examiner training time.

It is clear that private sector patent search firms can change the tide here. Increasing quality of pre-filing searching, preissuance submissions, and post-grant proceedings. At SPSG, we have access to key search tools that aid in creating robust searching. We also have industry-leading search best practices that are often emulated by others in our industry. As Director Coke stated this year, private sector patent search firms like SPSG are positioned to help in strengthening patent rights, through the best patent searches in the industry.