Reforming the USPTO to Comply with MPEP § 707.07(j) to Give a Fair Shake to Pro Se Inventor-Applicants, 9 J. Marshall Rev. Intell. Prop. L. 880 (2010)

Authors

Paul M. Swamidass

Abstract

If pro se patent applicants are successful with their applications, they are likely to be inspired to become serial inventors and patentees. In contrast, a pro-se patent applicant, who is turned off by a non- transparent and arbitrary examination process at the United States Patent and Trademark Office (“USPTO”), may curtail his/her instinct to invent and patent. The USPTO does not collect data or publish statistical analyses of pro se patent applications. Therefore, the challenges faced by the pro se inventor- applicants are hidden. The author subjected himself to the PTO’s patent examination process as a pro se applicant for twenty-five months for a first-hand experience of the process, which resulted in an issued patent in December 2009 after four consecutive rejections of all claims. The author’s first-hand experience as a pro se patent applicant is included as an illustrative case with a contributed section by a registered patent attorney, who provides a third-party evaluation of the examination. A tool proposed in this article to assess the quality of the patent examination process reveals many of the problems facing pro se applicants and, specifically, the failure of examiners to follow the requirements of Manual of Patent Examining Procedure (“MPEP”) § 707.07(j). The paper reasons with some evidence that, at various stages in the examination process, the pro se applicant is pushed to the point of abandoning his/her application prematurely. Further, the case gives rise to a concern that examiners have become too dependent on patent attorneys representing inventors, and may engage in irrational rejection of pro se applications. Detailed recommendations for reforming the USPTO are offered to ensure that examiners comply with all the provisions of MPEP § 707.07(j).

Recommended Citation

Paul M. Swamidass, Reforming the USPTO to Comply with MPEP § 707.07(j) to Give a Fair Shake to Pro Se Inventor-Applicants, 9 J. Marshall Rev. Intell. Prop. L. 880 (2010)