PTO Seeks Public Comment on Patent Pendency

By Gene Quinn
August 13, 2014

The United States Patent and Trademark Office (USPTO) is seeking public input to determine the optimal first action and total pendency target levels for patents. See Request for Comments on Optimum First Action and Total Patent Pendency. Written comments must be received on or before September 8, 2014, and should be sent via email to: patent_pendency2014@uspto.gov.

Currently, the USPTO targets of 10 months on average to a first office action, and an average of 20 months for total pendency were established with stakeholder input in the previous USPTO 2010–2015 Strategic Plan. In an effort to continue to take into consideration industry realities the USPTO would like to ensure a balance between workload, production capacity and the requirements of the stockholder community.

These targets have guided the USPTO in making significant reductions to pendency over the past four years, specifically: (1) A 30% reduction in average first action pendency, from an average first action pendency of 25.7 months in fiscal year 2010 to the current average first action pendency of 18.1 months; and (2) a 20% reduction in average total pendency, from an average total pendency of 35.3 months in FY 2010 to the current average total pendency of 28.1 months.

In the September 24, 2012, report of the Patent Public Advisory Committee (PPAC) noted that it supports reducing pendency, but also noted that the goals of the Office, while laudable, are not magical. PPAC specifically noted that the ten month first action pendency and twenty month total pendency could be improved. The PPAC advised that it was the collective opinion of the Committee that the USPTO should reach a properly balanced level of patent applications pending at the USPTO that is appropriate for the workforce level of the Office. Further, PPAC stated that inventory of patent applications should be low enough to achieve desired decreased pendency and high enough to accommodate potential fluctuations in application filings, retention of examiners, and changes in RCE filings stemming from the programs being instituted by the USPTO.

The Patent Office believes that by reviewing the optimal pendency levels the Office will be in a better position to plan for patent examination staffing levels and other agency resource requirements. Furthermore, revised or reaffirmed target goals for pendency will inform patent fee levels and revenue estimates during the biennial patent fee review.

It is against this backdrop that the USPTO is seeking comment on patent pendency. The USPTO is inviting the public to submit comments on issues related to patent application pendency. The USPTO is specifically seeking comments on the following questions:

  1. Are the current targets of 10 month average first action patent pendency and 20 month average total patent pendency the right agency strategic targets for the USPTO, stakeholders, and the public at large? If not, what are the appropriate average first action patent pendency and average total patent pendency targets, and what is the supporting rationale for different targets?
  2. Should the USPTO have first action pendency and total pendency targets be met by nearly all applications (e.g., 90 or 95 percent of applications meeting the pendency target) rather than seeking to meet the specific overall targets of 10 months and 20 months respectively?
  3. Should the USPTO consider technology-specific patent pendency targets, for example, at the Technology Center level? If so, should all the Technology Centers have the same target? If not, please explain why Technology Centers should have different pendency target levels and how they should be determined?
  4. With an eye to patent term adjustment (PTA), the USPTO wants to know if they should consider using a first action pendency target tied to minimizing the number of applications in which a first action is not mailed within 14 months? Similarly, the USPTO is also asking whether the PTA provisions include more specific actions by the USPTO in specific timeframes. Should the USPTO also consider using some of the other PTA specific timeframes for their optimal pendency targets?
  5. A USPTO policy to encourage completing first office actions too soon after the filing date of an application does not allow for the publication of all pertinent patent prior art and for the appropriate window for third-party prior art submissions. Thus, the USPTO asks whether the benefits of a prompt first Office action outweigh potential concerns of the Office action being issued too quickly?
  6. Should the USPTO be cautious at this point in time to avoid going too low in first action pendency due to so many recent changes in patent law? For example, the USPTO pointed to significant case law decisions that may impact large categories of inventions and possibly lead to reduced patent filings.
  7. In addition to seeking public input on optimal patent first action and total pendency levels, the USPTO also is interested in knowing if there are other activities where pendency or timeliness should be measured and reported. What other metrics should the USPTO consider utilizing to measure pendency or timeliness throughout the examination process? Further, specifically regarding RCEs, what other metrics should the USPTO consider utilizing to measure the pendency or timeliness regarding RCEs? Should these metrics also be considered for other continuing-type applications (i.e., continuation, continuation-in-part, and divisional applications)?

 

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.

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