For patent applications, Adler suggests:
- "Did the applicant conduct a thorough prior art search before the application was filed?
- Did the applicant identify the single closest prior art reference in the information disclosure statement as compared to the reference being first cited and applied by the USPTO examiner?
- Was the technical advance over the closest prior art clearly demonstrated in the application or did such a showing have to be submitted by declaration?
- Were the initially filed claims allowed as filed or amended during prosecution?
- Did the specification contain definitions of terms used in the claims?
- Was there internal consistency between the terms and ranges presented in the specification and those in the claims?"
Likewise, for post grant metrics:
- "Did the granted patent claims cover a commercial product/process?
- How successful has the covered product been in the marketplace?
- Did the patent claims that issued have a fatal flaw and not effectively preclude competitive alternatives?
- Have non-infringing alternative products been introduced?
- How many and when?
- Has the patent been cited by others having a competitive product?
- Have others with competitive products received patents?
- How long did it take for others to design around the patent?
- Did the patent covering the product withstand or fail a validity test, as by opposition or litigation?
- Was new art cited during the opposition or validity challenge to invalidate the patent?
- Were the claims construed as applicant argued or were the claims construed against patentees?"
Most patent practitioners have been down this rocky road before. I applaud Mr. Adler's renewed call to define useful metrics. But I wonder if it is to anyone's advantage, especially a large company, to actually make public the types of quality metrics used internally. The old adage, "hold on to the sand that makes the pearl", seems to be a prudent strategy for companies having the most to lose in a patent skirmish.
On the heels of Adler's call for better metrics, The Patent Board has released their top ten list of patent innovators in telecommunications. For the Information Technology industry The Patent Board's list can be viewed here. You may recall that the Board is working with the Wall Street Journal to create patent and technology strength metrics as part of the Journal's financial coverage.
I would be interested in your comments and suggestions for patent quality metrics. If you don't care to leave them here in public, feel free to email them to isoquanticATSYMBOLcox.net. Anyone sending me suggestions will receive my compiled list once the dust has settled.