Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), testified in an oversight hearing held by the House Judiciary Committee’s Subcommittee on Courts, the Internet and Intellectual Property [1].
Among the topics addressed in the testimony were patent and trademark quality and timeliness; hiring, retention and work-life offerings such as the USPTO’s telework program; global policy and enforcement initiatives; and the pending patent modernization legislation. The testimony was to address developments and successes since the last USPTO House oversight hearing in 2005.
Dudas’ testimony was meant to highlight the USPTO’s “record-breaking performance” for the last two years. Oh, really?
Granted, this is a large corporate entity given it has 8,500 employees and almost $2.1 billion in fee revenues. Dudas said the USPTO hired 1,215 patent examiners in FY 2007 and intends to hire an additional 1,200 patent examiners each year through 2013 and expand the telework program (we’re all for these efforts).
On the downside, Dudas (proudly?) highlighted the fact that the allowance rate for patents is currently 44%. This is in contrast to allowance rates in excess of 70% just eight years ago. Bear in mind that patent examiners reviewed over 362,000 patent applications in 2007, the largest number ever.
So, does this mean that quality is up or that frivolous rejections are soaring? Did patent applications really get that much worse in just a few years?
Also, the percentage of Board of Patent Appeals decisions in which the examiner is affirmed or affirmed in part has increased from 51% to 69%. Finally, since the pre-appeal brief program was established in midyear 2005, the percentage of applications reviewed under the program in which the examiners action is deemed correct has increased from 45% to 56%.
Dudas mentions that the Office of Patent Quality Assurance (OPQA) has “implemented targeted reviews of examination processes or functions that are perceived to potentially be problematic trends” whatever that means — the areas of final rejection practice, Request for Continued Examination (RCE) practice, search quality and restriction practice were identified for review during FY 07.
Not surprising, Dudas is tickled pink that the current version of the patent reform bill include provisions pertaining to applicant quality submissions (AQS) basically shifting the burden of the USPTO’s job onto the applicants themselves.
The USPTO is touting its many initiatives to lessen their workload, which include:
1. Accelerated Examination
The USPTO has established procedures setting forth requirements for patent applicants who want, within 12 months, a final decision by the examiner on whether their application for a patent will be granted or denied. To be eligible for “accelerated examination,” applicants who file under this procedure are required to provide specific information so that invalidity of any ultimately issued patent can be completed rapidly and accurately by any attacking competitor crying inequitable conduct.
2. Peer Review Pilot
The USPTO is still trying to push its Peer Review Pilot [2] project that gives so-called technical experts in computer technology the opportunity to submit annoying and irrelevant technical references before an examiner reviews it.
3. Markush Claims
Earlier, USPTO proposed new rules [3] in the Federal Register that will allow an examiner to split one Markush claim into lots and lots of individual claims as distinct inventions so that one application can be turned into dozens, thereby lending credence to the claim that the USPTO gets too many applications.
4. Information Disclosure Statements
We’ve already discussed the stupid USPTO proposed rule changes to information disclosure statement (IDS) requirements [4] and other related matters to improve the quality and efficiency of the examination process. The proposed changes will enable the examiner to require that the applicant make damning statements against themselves so that any ultimately issued patent can be completed rapidly and accurately by any attacking competitor crying inequitable conduct (also see No. 1 above).
5. Open Source as Prior Art
The USPTO is consulting with the Open Source community regarding the potential development of a tagging process and interface to enable examiners access to open source software repositories as a source of prior art.
6. Electronic Filing and Processing
The USPTO continues to promote electronic filing and processing of patent applications as a means of reducing paper-based inefficiencies. Now, if someone could just explain to me why a $2.1 billion dollar entity trying to move to a web-based system still gives me an error message so often.
7. Central Reexamination Unit (CRU)
Reexamination cases are now assigned to a Central Reexamination Unit (CRU). The goal of the CRU is to close prosecution on all ex-parte reexaminations within two years of filing.
8. Pre-Appeal Conferences
The USPTO announced that patent applicants can request a pre-appeal brief conference and learn its results before nothing happens and the applicant has to go ahead with incurring the costs of drafting and filing an appeal brief. This change is expected to cause more work for applicants.
9. Pre-First Office Action Interview and First Action Interview
The pre-first Office action interview with the applicant or his/her designated legal representative is designed to discuss potential prior art rejections and possibly resolve many or all issues with respect to patentability. Under a pilot program, the first action interview, upon request, prior to the first Office action on the merits where the examiner will conduct a prior art search and provide applicant with a condensed pre-interview Office action. If done fairly, this has a lot of potential to streamline prosecution, a system whereby applicants would otherwise be forced into a final office action.
Not surprising, Dudas is tickled pink that the current version of the patent reform bill include provisions pertaining to applicant quality submissions (AQS) [5], basically shifting the burden of the USPTO’s job onto the applicants themselves.
Anticipate This! [6] wonders what ever happened to an inventors right to a patent.
See all the fun here [7].