I've filed several FOIA requests regarding the USPTO's quality review procedures. The "Office of Patent Quality Assurance" (OPQA) is the entity responsible for quality reviews at the USPTO.

My FOIA requests regarding the OPQA have all been denied on the basis that the USPTO has "no records" regarding the OPQA. This is despite the 50 examiners employed by the OPQA and the thousands of "in-process" reviews it conducts each year.

I have appealed one of these "no records" rejections on both procedural and substantive grounds. Not surprisingly, the USPTO did not respond to my appeal, thereby exhausting my administrative remedies.

I've considered filing suit under the FOIA to force the disclosure of OPQA materials, which is my only remaining option. However, if I filed such a suit, I'm sure the USPTO would produce some inconsequential documents in response to my request to render my claim moot.

As such, I think the APA is a more effective tool for halting the USPTO's possibly illegal behavior (e.g. performing secret and arbitrary adjudications).

- Sam

"As such, I think the APA is a more effective tool for halting the USPTO's possibly illegal behavior (e.g. performing secret and arbitrary adjudications)."

What is the APA?

Is there any way to "interview" someone in the OPQA? Can contacting Congress to try to get congressional hearings force the information out into the open? Especially during "patent reform" legislation.

The APA is the Administrative Procedure Act, which governs the operation of all federal agencies. It sets forth various safeguards that prevent agencies from violating the due process rights of affected parties.

For years, the USPTO contended that it was not subject to the APA, but the Federal Circuit found otherwise in In re Zurko (142 F.3d 1447) and subsequent cases like In re Kahn (441 F.3d 977).

Of importance, the APA prevents agencies (including the USPTO) from performing arbitrary and capricious adjudications. If the OPQA is secretly and arbitrary concluding that allowed claims are too broad [and then coercing examiners to issue bogus rejections], this would likely provide a cause of action under the APA [provided an applicant exhausted his or her administrative remedies].

Sam -

Would you mind sharing in a comment what the process would be to bring an APA action in the event that an applicant believed the OPQA shot down the allowance of a set of claims?

From what I have been able to tell - it is very difficult to actually determine that a case has been subjected to the dreaded second pair of arbitrary eyes... Most Examiners are very hesitant to mention the process at all not to mention they would never "officially" note in the file that their determination was overruled. This is the most frustrating aspect of the OPQA -- neither the applicant nor their attorney/agent is capable of responding to the issues with the individual(s) who brought the rejection forward. It is like arguing with the wind....

Thanks for sharing all the insight,

Douglas

Douglas,

Based on what I’ve been able to piece together, the review performed by the OPQA is different then the “second eyes” review. It’s my understanding that before an examiner can issue a notice of allowance, he must get approval from his SPE or other senior art unit official. The review performed by the OPQA appears to happen after the “second eyes” has approved the allowance. So, the OPQA functions entirely independent of the art units. If you’ve ever had a case withdrawn from allowance or issuance, or a long delay in receiving a NOA after submitting a simple amendment, it’s probably due to an OPQA quality review.

I agree that it is impossible to prove that an application has been improperly reviewed by the OPQA using the image file wrapper (IFW). According to rumor, the OPQA sends out handwritten post-it notes with instructions to withdraw allowances. The handwritten notes are thrown away (and not included in the IFW) after use.

So, if the above is correct, the USPTO was atypically crafty in forming the OPQA quality review procedures to evade easy APA scrutiny. Like most patent attorneys, my expertise lies within 35 U.S.C. and not 5 U.S.C., so I’m not certain if the above is sufficient to bring an action under 5 U.S.C. 706 or how one would rebut an assertion by the USPTO that the OPQA is not involved in the adjudication process. I had hoped to write an article on the topic, which was the impetus behind my original FOIA submissions.

From a due process standpoint, I have less of a problem with the “second eyes” review. I can always have an interview with the examiner and his SPE to address any concerns that the SPE has. With the OPQA, I have no recourse.

Regardless of whether the "second pair of eyes" belong to OPQA, it is clear that they are neither the PE or the SPE. I have two cases in two different art groups that had arduous examination. In one case, when the examiner told me that he could not get around the "second pair of eyes" after the examiner backed off from a compromise after a painful interview, I asked who the second pair of eyes were. He said they are the "QAS". I asked if the PE or the SPE were the QAS (I had spoken with both these individuals to try to have the case move forward). He said no. I told the examiner that it is illegal to reject the claims just because they seem "too broad" to the QAS, the QAS will need competent prior art. The examiner said they gave him some prior art, so I told him I would like to see the prior art. The office action came back with a 103 rejection based on the "Microsoft Computer Dictionary" because all the technical terms were found in the dictionary. I guess he was kind enough not to give me a 102, as he could have, the Microsoft Computer Dictionary is technically a single reference. I had received an eerily similar 103 rejection in the other case also based on the Microsoft Computer Dictionary (this time in combination with another reference that had appeared repeatedly in the 5 or 6 office actions in the file history). I guess the QAS folks find that dictionary all purpose prior art reference. Both cases are not abandoned as the USPTO finally used up both clients' budget. Unfortunately, one of the clients is an individual inventor. That really sucks because the QAS people don't seem to care that antics are hurting working class individual inventors with family to feed and children to send to college.