It goes without saying that the constant training of the Examining corps on the latest developments in patent law is a near impossible task.
Consider the following from a 1995 USPTO press release:
The U.S. Patent and Trademark Office is developing new guidelines that will govern the examination of patent applications on computer software inventions, the agency announced.
The guidelines are being developed in response to recent judicial decisions that suggest a trend toward increasing the eligibility of computer software-based innovations for protection under U.S. patent laws, while decreasing the availability of protection for certain aspects of computer programs under the copyright process, the PTO said. At the same time, the Office announced that it is reconsidering its position in a number of pending appeals concerning software-related cases, including In re Beauregard, which involves a computer program stored on a computer readable medium such as a floppy disk.
“The PTO must keep its practices consistent with judicial interpretations of the law. A failure to do so could jeopardize effective intellectual property protection for one of our nation’s most important industries,” said Nancy Linck, PTO’s solicitor.
Fast forward to last year and the Federal Circuit’s decision in In re Bilski…and you can appreciate the problem. In 1995, the Office had to prepare for caselaw developments that were increasing the patentability of software-based inventions. Now, just fifteen years later, the Office is preparing the corps to examine applications in the face of a sternly downward trend.
Like it or not, modern patent law is characterized by constant change. While we all struggle to stay current in this fast-paced area of law, we have to acknowledge that the Office has an additional challenge in its efforts to keep up with constant change: volume.
While we’re struggling to train ourselves and our teams, the Office is dealing with thousands of Examiners and hundreds of thousands of applications. It’s a grand scale faced by no other entity.
Why bring this up now? Simple….patent reform and patent quality.
The reform debate will be heating up again in coming months. With any luck, the patent community will pay attention to the patent quality issue and the need for reforms that support it. If we begin to acknowledge the predicament faced by the Office, maybe we can start helping it meet the challenge.
the 2006 Intellectual Property Law Seminar sponsored by the Intellectual Property Law Section of the Oklahoma State Bar. The seminar is being held at the beautiful 
