Earlier today David Kappos, the Director of the United States Patent and Trademark Office, testified before the Senate Judiciary Committee at the Senate’s first oversight hearing of the America Invents Act. Among other things, Director Kappos noted that the USPTO continues to move forward on AIA implementation, saying that the much anticipated new rules packages to implement the next round of AIA changes will be released on or before August 16, 2012, giving the Office time to train personnel prior to implementation on September 16, 2012. Kappos also outlined how the USPTO, in the wake of the AIA’s passage, is now taking the lead internationally in creating a truly 21st Century global patent system.
The testimony of Director Kappos did not reveal much, if anything, new to those who have been following the USPTO, rather the testimony seemed more to keep the Senate Judiciary Committee in the loop. Notwithstanding, some of Kappos’ prepared remarks did contain facts and figures that may be of interest. Additionally, Kappos revealed that the USPTO received over 600 comments relative to the location of the additional Satellite Patent Offices called for in the AIA. Kappos told the Senators that he expects to complete that review process and announce the next Satellite location something this summer.
Director Kappos also mentioned the Ombudsman Program to the Senators, but only very briefly. He said: “Our Ombudsman Program, now in its second year, has enhanced the USPTO’s ability to assist applicants and their representatives in resolving breakdowns in the normal application process.” I would have liked Director Kappos to spend more time talking about this because I think this program is a big success and more people need to know about it.
I had an occasion to use the Ombudsman program earlier this year when an inherited case was derailed due to a peculiar procedural matter. In attempting to respond to the Office Action I amended claims to include previously unclaimed substance found in the specification. The examiner said the material added so changed the claims that we ere not allowed to add these limitations in this case, having effectively elected to pursue a different invention with the original claim set. We were given one month to correct or until the end of the six month statutory period to respond. Unfortunately, there was no good faith argument that could be made that anything contained in the original claim set was patentable. So I asked the examiner if we could just file an RCE to get the new claim limitations considered. The examiner said that we could. Unfortunately, others at the Patent Office thought no — given that no final rejection had been issued. So now we had an Amendment and Response timely filed that was not entered and an RCE that was timely filed (i.e., within the six months) that was denied. HELP!
Who are you going to call? The Ombudsman. It took less than a week to have the application back on track. I am a big fan of the Ombudsman program. It worked for me as it is advertised. While not appropriate for substantive matters there are always going to be those procedural oddities that can easily derail an application given the bureaucracy that is the USPTO. If you haven’t tried the Ombudsman Program give it a try. We are now anticipate claims issued in the aforementioned case.
In any event, below are a few items in Director Kappos’ testimony that caught my eye and seemed more substantive in nature. The first deals with Track One. Why more people are not using Track One is beyond me. I advise virtually all of my clients to use Track One and suspect that in Q3 and Q4 some will finally take up the recommendation. Frankly, it seems like a no-brainer to me for those who need a patent quickly, whether it be for investors, because of ongoing activities that would be infringing or even just to prove to a significant other that all that time spent in the garage has amounted to something.
“The USPTO has launched the AIA-mandated prioritized examination program (Track One) that allows patent applications to be processed to completion in 12 months and offers small businesses a discount on this option. Since its inception, we have received more than 4,000 Track One patent applications, and more than 1,500 entrepreneurs have taken advantage of those 50 % discounts. We have completed more than 2,300 first actions on Track One examinations in an average of approximately 90 days, mailed over 500 allowances, and issued more than 200 patents.”
“[T]he USPTO is moving forward with opening satellite offices within three years of the AIA’s enactment. These offices will allow the USPTO to attract and retain qualified patent examiners and improve applicant-examiner interaction. The USPTO will open its first satellite office in Detroit next month. At the end of last year, the general public and city and state officials across the country were invited via a Federal Register notice to submit comments and suggestions regarding the selection of additional offices. We are in the process of reviewing and analyzing the more than 600 responses received and expect to announce the locations of additional offices this summer.”
“The Patent Cooperation Treaty (PCT) enables U.S. applicants to file a single international application in a standardized format, which is then received by PCT contracting foreign states. The USPTO has been working to raise its PCT processing techniques to world-best levels to aid U.S. technology owners to obtain early and fair IP protection internationally. We have taken concrete steps to improve our quality and timeliness. For instance, we modified the quality measures of PCT work products to be more aligned with those of U.S. national applications to maximize the potential for re-use of the international search and patentability opinion in the national phase. On timeliness, in 2011 our efforts resulted in issuance of 81% of international (PCT) search reports within 16 months from priority, and 92% within 18 months from priority. This represents a threefold improvement over our performance on these metrics three years ago.”
Patent Prosecution Highway
“From its inception in 2006 to the end of May 2012, the USPTO has received 11,056 PPH requests. In each of the past two years, the USPTO has received double the number of requests of all previous years combined, and is on pace to do the same by the end of CY 2012. Other key PPH metrics include:
- Processing efficiency—applications filed under the PPH require 20% fewer office actions to complete prosecution than the overall USPTO average (2.1 office actions/disposal for PPH vs. 2.6 overall); and
- Higher allowance rates—as compared to overall USPTO averages, PPH applications are allowed at a much higher rate at first action (24% vs. 14%) and at final disposition (88% vs. 49%).
The USPTO is currently partnering with 22 other patent offices around the world on the PPH, and is in discussions with several others about developing PPH pilot projects in the near future.”
Pro Bono Programs
“Consistent with the directives in the AIA, we are working with intellectual property law associations across the country to expand the availability of pro bono patent services for under-resourced independent inventors and small businesses. Programs have been launched in Minneapolis/St. Paul and Denver, and we anticipate adding three more programs this year and an additional 11 programs in 2013. We intend to have regional coverage across the entire U.S. completed by 2014.”