SECOND PAIR OF EYES REVIEW - IS THE WICKED WITCH REALLY DEAD?

I have heard rumors for some months that the dreaded “Second Pair of Eyes” review of Examiners’ intent-to-allow patent applications had been eliminated. For those of you who are not on the front lines of patent prosecution, the “SPOE” review began in 2000 in response to the high rate of allowance of business method patents in Group 705. A “senior examiner and a review panel” (as one writer described it) was inserted between the Examiner and the Office of Patent Quality Assurance (which reviews about 4-5% of all proposed allowances) to block allowed applications in this Group from even reaching OPQA. This apparently worked quite well, and by 2001-02, the PTO had extended SPOE to other examining groups, including biotechnology. Like the sorcerer’s apprentice who could not control the forces he unleashed, SPOE cut the overall allowance rate of patent applications from about 72% in 2000 to about 44% in 2008. One Examiner told me that if he received two “reversals” from an SPOE review, he could be fired. Examiners get points if an application is allowed or abandoned. With this sort of threat hanging over every allowance, which path would you choose, especially if you were an Examiner working in a controversial area like most of biotechnology? But did this program lead to a perception that the quality of issued patents was improving?

Director Kappos apparently does not think so. In his address to the members of AIPLA at their recent annual meeting in Washington, DC, he explicitly called for reform of the present “count system” (which I hear is undergoing reform right now) and implicitly criticized SPOE review, by stating that a system that attempts to measure quality after allowance (that is, after an initial determination of “quality”) was not tenable. As noted above, the very existence of such a system caused Examiners to err on the side of rejection, and the SPOE reviewers necessarily felt pressured to reverse a certain number of Examiners in any case (or why should they be quality reviewers in the first place?). Since then, I have asked many practitioners if SPOE has been terminated. The answers were all ambiguous but seem to add up to a qualified “yes.” Apparently the program will continue to operate at a reduced level to try to control rogue Examiners who issue too few or two many applications (Yes, Virginia, there are Examiners in the latter group). So as Halloween looms, perhaps one of the scariest PTO innovations in a long time will not be stalking our claims much longer.

(I want to thank posts by E. B. Chen, NC Jolt Online Ed. and Gene Quinn in IPWatchdog.com for some background material I used in this note.)

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