Offering Help: A Solution for Addressing the Patent Backlog

By Gene Quinn
January 6, 2010

The patent backlog and all of the associated problems that go along with it, such as the increasing length of time it takes to obtain a patent, is the largest single problem facing the United States Patent and Trademark Office.  In fact, this problem is not unique to the US Patent Office.  Other Patent Offices around the world are also plagued with growing demand as the global economy continues to transition into an information and technology based economy.  In the US the reason for our backlog getting out of control over at least the last 5 years is well documented, and largely related to the top level political appointees not having any patent experience.  That has changed under President Obama and there remains a lot of optimism with respect to where the Office is heading, although to really get to the bottom of the problem Congress will need to cooperate and fund the Patent Office rather than viewing it as a revenue generator for other government programs.

I am not naive, so I realize getting Congress to do anything relating to patents is nearly impossible and getting them to do anything that is actually helpful seems almost akin to believing in the tooth fairy.  So the Patent Office is going to have to come up with incremental solutions on their own.  From time to time I will offer solutions that will help, to one extent or another.  Today I suggest that the Patent Office immediately suspend prosecution on any and all patent applications in which a Bilski patentable subject matter rejection has been or could be made.  Redeploy patent examiners to other areas and dig into the backlog.

Allow me to explain…

First, lets set the table and take a look at the problem, at least in terms of raw numbers.  As you can see from the chart below for the last 4 years more than 1 million patent applications remained pending at the end of each fiscal year, which ends for the Patent Office on September 30 each year.  For the last 2 years more than 1.2 million patent applications remained pending.  I have every reason to believe that the number of patent applications filed during fiscal year 2010 will set an all time record.  While large companies are slowing down, small businesses, independent inventors and start-ups are becoming far more active, which is what you would expect in a recession and the aftermath.  There are also trillions of dollars in the pockets of investors who are getting tired of how long the recession has dragged on, economic activity seems to be increasing except perhaps with respect to building new homes, and head hunters I know in the patent world are telling me that given the workload at firms many will need to start hiring by mid 2010, and should have been already but are nervous and want to make sure the economy really is moving upward.  So 2010 should be a banner year for the USPTO, and a definite upswing for the technology, innovation and patent communities.  That is my prediction and I am sticking with it!

What this means is that David Kappos and his team of administrators need to continue to figure out innovative ways to do more with less.  I realize that shouldn’t be the case, but life isn’t fair, so we need to get over it for now, roll up our sleeves and continue to press Congress for a solution.  In the meantime works needs to be done, and it is ridiculous for the Patent Office to continue to do any work on any application that has or will have a Bilski rejection.  Simply put, spending even one minute on a patent application with Bilski subject matter is a complete and utter waste of time; akin to raking leaves in a wind storm.  You can spend all day raking leaves only to accomplish nothing and need to start all over once the wind stops.

The United States Supreme Court typically takes cases where there is a split among the Regional Circuits on important and fundamental legal issues.  In their own unique and strange way the Supreme Court seeks to bring clarity to these areas, or at least that is the operative theory.  When they take a patent case, however, there is no split among the Regional Circuits because only one Circuit, the Federal Circuit, has the jurisdiction to hear patent related appeals.  So when the Supreme Court takes a patent case it is not to give guidance to make the law more uniform across the country among and between the Regional Circuits.  Rather, the Supreme Court takes a patent case to reverse the Federal Circuit.  The Supreme Court does not take a patent case, at least not in recent history, to tell the Federal Circuit “you got it right.”

We know with certainty that the Supreme Court will reverse the Federal Circuit Bilski decision, so acting like it is the law is just recklessly irresponsible.  The Supreme Court will not ratify the Bilski decision.  If they were going to do that they would have denied cert and not heard the case.  So things are either going to be much better for patent applicants and easier to patent and keep valid claims (which I think is likely) or it is going to get much worse.  The Supreme Court decision will be different enough from the Federal Circuit Bilski decision that it will be impossible to view the resulting test as a minor tweak.  There will be quite a bit of substantive distance between the decisions, which seemed rather clear by Justice Sotomayor constantly referring to the CAFC decision as “extreme”, Justice Breyer being troubled by how far “the Circuit” went and by Justice Kennedy seeming to want to ensure the State Street invention remains patentable.

By spending any time on Bilski the Patent Office is just wasting time, and will have to eventually double back and redo all that work.  So rather than putting precious resources into action and bringing them to bear on settled areas of invention massive amounts of examiner hours will be spent dealing with an area that will change substantially within 6 months.  Imagine what would happen if the Patent Office devoted those resources to other applications, cleared out backlogs in other areas and then the Supreme Court issues its decision that says everything is patentable or nothing is patentable.  In either scenario the Patent Office could quickly plow through the applications, either issuing or denying once and for all.  Following this course in 2010 could result in a massive decrease in the backlog by the end of the fiscal year.

Not only should the Patent Office stand down, but district courts should just delay making any rules for the 3 to 6 months we will have to wait for the Supreme Court to issue a decision.  Doing anything else is just a waste of time and a missed opportunity.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 10 Comments comments.

  1. John Spevacek January 6, 2010 1:42 pm

    Gene,

    Don’t examiners have areas that they specialize in? (Sorry, I don’t know. I’m just a PHOSITA.) If so, how practical would the suggestions be?

    On the side, my bet will be that this will just about the last decision released. It seems to me like the SCOTUS takes its time on scientific & technology issues – last term, Melendez-Dias v. Massachusetts wasn’t released until late June, despite being heard in mid-November.

  2. Gene Quinn January 6, 2010 3:15 pm

    John-

    Patent examiners do develop specialties, but typically they are not so specialized that they could not be reassigned to other areas. Examiners that stay at the USPTO for a career will move from Art Unit to Art Unit, typically in areas that are closely or at least tangentially related. I have also heard stories from examiners that have moved from area to area say that the USPTO will announce they are looking for examiners to move into a certain area and if interested they move. For example, John White is a Civil Engineer and once upon a time the Office was looking for folks in the automotive filed. Those who know John know he is a massive gear-head and huge into automotive technologies as a hobby. So he moved quite easily. I suspect that many, if not most, of the examiners who operate in the Bilski areas could move into other tangentially related areas, such as electronic devices for example. The examiners don’t have to know enough to invent in those areas, just enough to understand and be a critical observer. Certainly you wouldn’t want someone with a bio/chemical background to move into an electrical field, but most examiners are likely well capable of moving into fields based on personal experience or inclination.

    KSR was issued in the April/May time frame. I don’t know that it will go to the end. I think they typically issue patent issues earlier. The later the decision the worse I think it will be for the US economy, and the worse for software. The case you mention related to the Sixth Amendment right to confront the witnesses. Constitutional issues are almost always decided in June, or at least late in the term because the Court takes as much time as possible to consider the ramifications. There really are no Constitutional issues in Bilski, so I expect a decision in late March through early May.

    -Gene

  3. John Spevacek January 6, 2010 3:49 pm

    Thanks for the insight. Being technical, I look at things from a technical viewpoint.

    I thought of Melndez-Dias as a “technology” case more than a 6th amendment case – certainly it was in the details. It was saddened in reading those opinions about how little they knew about how science really works, that it is not as absolute as is popularly thought and that there are plenty of room for mistakes to be made. Maybe I was taking that as a hesitancy on their part to decide quickly on something that I thought was cut-and-dried.

  4. Bill Nye January 7, 2010 12:14 pm

    Examiners in related technology can and do move from one art unit to another, but such movement is rare and very time consuming for the office. Lacking hours to explain why what you suggest cannot work I will only add the following; A mechanical engineer is not an electrical engineer, a computer scientist who specializes in software cannot easily move to hardware, a biochemist may know nothing of inorganic chemistry and both may lack a fundamental understanding of whole organism biology. But then perhaps you would have no problem seeing a urologist for a heart condition?

  5. Gene Quinn January 7, 2010 1:09 pm

    Bill-

    Did you read what I wrote? Obviously not. You lack time to explain because you cannot explain why I am wrong and my suggestion will not work. Everyone knows it will work, if they are honest.

    It is recklessly stupid to have examiners continue to spend any time on Bilski matters. Every minute is a minute wasted because the Supreme Court will change the law and all the work done will need to be redone, either in the same application, in an RCE or on appeal. You act like examiners are stupid and cannot move. They can and do move, and that is what should be done now.

    Of course, you completely ignored what I wrote above about asking a bio/chem examiner to move to electronics. How convenient. You have an agenda and rather than debate fairly you mischaracterize and act as if you know better. Those in the know understand your approach is nothing more than head in the sand.

    -Gene

  6. ~~Logan~~ January 7, 2010 3:02 pm

    Gene,

    While an examiner can examine areas that are closely related – emphasis on closely – to go from areas not so closely is not a good idea. I am not saying that is what you are suggesting, just setting parameters for this discussion.

    In the past, particularly in the later 80’s early 90’s, they did move art to examiners in drastically different areas. The results were mixed, at best. The better examiners would talk with examiners in the other art & try to get guidance for searches & allowability, which of course took time from those other examiners. The lesser examiners would just do whatever to get rid of the cases. I had one friend that worked in switches that got about 100 cases from the computer area (old class 364). Of course, it was a struggle for him. There were many other instances like this that I am aware of.

    And then you also need to consider that the POPA agreements require that when examiners are given a different art to examiner they are supposed to be given a learning curve to help accommodate their learning of the new art. Something like a 25% curve for up to 6 months, IIRC. Even if the arts are close this needs to be done.

    A further point is if a 1st art/class has a lot of Bilski-type issues it would be reasonable to expect that the “closely related” art would probably also have similar issues, which makes the suggestion less useful.

    Now, on top of all this, probably almost all of the business methods, as well as most of TC 2100, as well as at least half of TC 2600 & 2400 would have their cases not be examined (i.e., skipped/ignored) for the next 6 months because the “might” have a 101 issue. Since it is not usually easy to determine if a possible 101 issue exists in a case until it is examined, anything other than skipping ALL the cases in the areas where 101s often appear would be a waste of time. Starting a case & then putting it aside is a waste of even more time. As I understand your suggestion, you want ALL the cases just skipped, right?

    What your suggestion would do is just rearrange the order cases are worked & probably do little to actually reduce pendency. Eventually all the cases would still need to be examined by the same number of examiners and the cases would still need to be evaluated under 101 with whatever guidance comes from the Supremes.

    Personally, I think the better course of action would be just to ignore the whole 101 issue until the Court makes their decision. If it is not raised by the examiner until then, no time is wasted & cases can still move forward in the proper course & not taken out of order. A form paragraph could be created to say that any 101 issue is stayed until the Supreme Court decision in Bilski is handed down. For any cases that are ready to be allowed, at that time the examiner can take a look & determine if a possible 101 issue might be present & have the case suspended until the decision comes down & notify the applicant of such.

    While I agree that making 101 rejections & analysis “may” be a waste of time, just skipping all the cases where it may exist is not reasonable or practical. I think this would be a better solution as prosecution can still move forward & time/effort is not wasted. Like I said above, too often I have seen examiners be given cases from different arts & usually the results have been undesirable, even for relatively close arts.

    ~~Logan~~

  7. Gene Quinn January 7, 2010 3:20 pm

    Logan-

    I think we are on the same page. I definitely don’t want to suggest that examiners be moved into areas that are vastly different.

    Based on my own experience I can tell you that patent examiners continue to reject applications based on Bilski, and have done so even knowing the Supreme Court accepted the case. I have a case now that requires a response by the beginning of February where all claims have been rejected based on Bilski. So I will respond, and maybe even get a final rejection before SCOTUS issues its decision. Then after Final I won’t be able to do much even though the Supremes change the test making the First and Final Actions inadequate. So I will have to file an RCE. In the process I have wasted time and resources, and the Patent Office has had an examiner devote time only to have the Supremes render the entire examination moot. So what is going on presently will not dig into the backlog, it will just perpetuate it and make it worse.

    I like the idea of staying Bilski rejections pending an outcome, but that is not what is happening. So in this area most if not all of what examiners are doing presently will just have to be redone once we have a decision, which seems like a waste. Since Bilski was handed down by the Federal Circuit this area has speeded up a lot, which seems to suggest they are just making Bilski rejections quickly and clearing out the backlog. So much wasted time will make the problem worse once we have a ruling from the Supremes. It also forces clients to waste money, paying attorneys to respond and keep actions pending. So the cost of continuing to act like Bilski is and will remain the law are enormous.

    I am not concerned with extending the Bilski related application pendency, that has to be while we wait for the Supremes. In the meantime, to the extent possible, examiners should not be taking up cases that require a Bilski 101 rejection and could be reassigned to other electronics and systems areas that are closely related to assist in weeding through those cases, decreasing pendency there. Then when a decision from the Supremes comes the USPTO could give applicants an opportunity to amend claims to conform with whatever the Supremes announce, have the case considered then and either quickly allowed or quickly rejected.

    I think a thoughtful workflow here would streamline the process, decrease costs for clients, not waste examiner time and help the backlog elsewhere in the meantime.

    -Gene

    -Gene

  8. staff January 11, 2010 10:53 am

    Gene:
    Perhaps another solution would be to permit organizations to identify their most important aplns which would be taken out of order. Small entities would be given greater deference as their aplns are far more important to them. My hunch is large firms are flooding the PTO with aplns. Where they lack in true innovation they try to make up for in numbers. For them it’s more about quantity than quality. This triage system should greatly help.