At the recent American Chemical Society meeting there were numerous seminars regarding proposed rule changes in the regulations pertaining to patent prosecution. Some attorneys from major law firms were present and there was considerable hand wringing. Changes affecting the scope of inequitable conduct were of special concern.

It seems to me that the proposed changes, while not trivial and possibly even a net benefit, fail to sum up to a significant re-think of the US patent system. The strategic plan proposed by the PTO seems to address for the most part mechanisms for increasing the velocity of patent examinations. Given the substantial growth in patent applications, the PTO definitely does need to staff-up and streamline the system.

However, inventors and assignees need to have a better idea of how the PTO operates. Currently, only attorneys seem to have a grasp of the system, and barely at that. The quality of patents will increase only when inventors and assignees have a better idea of how to assemble a packet of disclosures for the patent attorneys.

All too often the attorney receives an incomplete and poorly articulated stack of scribblings from an inventor. Since patent attorneys are by nature predisposed to “find a way” to patent the invention, they “find a way” to do it. That is why you hire an attorney. But all too often a sketchy disclosure to the attorney results in poorly executed claim construction and a patent that is too narrow in scope.

In order for the US patent system to work well, the inventing and patenting public needs to become more familiar with the system.