USPTO’s Patent Quality and Pendency Programs are Bearing Fruit

“The USPTO has been modernizing its quality assurance programs and IT infrastructure, including the use of new technologies, and providing detailed information about its progress to the public.”

This article was prepared based on interviews conducted with USPTO officials.

https://depositphotos.com/home.htmlAccording to Strategic Goal 1 of the United States Patent and Trademark Office’s (USPTO’s) FY2020 Performance and Accountability Report (PAR), the USPTO is committed to high-quality patent examination in a timely manner. From submission to approval, the USPTO has established groundbreaking quality assurance programs, metrics, and training programs. It has also established IT modernization programs to improve the overall quality of the office’s work products and processes. These steps have made it possible for the agency to introduce new programs to significantly reduce pendency.

A high-quality patent must adhere to the requirements of Title 35, and to the corresponding and applicable case law. To monitor and drive quality, the Office has been conducting both internal and external stakeholder perception surveys semiannually since 2006. In response to stakeholder feedback, the USPTO is providing detailed data at the technology center level, including filings, pendency, staffing, productivity, and inventory levels.

The efficient institution of the USPTO Patent Quality Assurance program is bearing fruit. The program concentrated on developing and implementing data-driven quality improvement initiatives and training for the patent examining corps. Coherent, dependable, and relevant indicators of quality are governed by an ISO 9001:2008-certified patent examination quality management system. In addition, the USPTO has redesigned the Patents Data Visualization Center.

The USPTO has an ongoing  IT modernizing campaign to improve efficiency of the patent examination process, among other things. In January 2020, the USPTO moved its digital assets to cloud infrastructure in order to increase bandwidth capacity, better manage workloads, and speed up connections. Artificial intelligence (AI) and user-centered design are being incorporated into USPTO processes to quickly and more accurately classify patents and send them to the right Technology Centers to be reviewed and finalized. AI also helps the agency to learn from past mistakes and eliminate unnecessary steps that would increase patent pendency.

According to the PAR, the average total patent pendency from filing to grant was 23.3 months. This is significantly less than the average total patent pendency of 35.3 months that was reflected in the PAR just 10 years earlier.

The USPTO offers a variety of programs to expedite patent prosecution, which are described below.

Prioritized Examination Program

The Prioritized Examination Program (PE) was developed to reach a final disposition of each patent within one year of the filing date. Also known as “Track One,” this program’s average pendency is 6.5 months. This program is beneficial to those who file patent applications including claims that accurately define the process or product after a thorough patentability search and analysis by the applicant such that the claims avoid the prior art to the extent possible.

The application process for Track One is relatively simple. An applicant need only file a request, complete a Prioritized Examination Request Form, and pay fees. Fees are significantly reduced for small and micro entities. Track One does not require a pre-examination search, though it is advisable to do so.

Only 12,000 prioritized examination requests are accepted each fiscal year. Track One has been productive. For this reason, the USPTO increased the prioritized examination acceptance rate from 10,000 requests in 2019 to the present 12,000.

In Table 1, the authors share examples of their firm’s experience with expediting examination using Track One at the USPTO. In Application No. 17/308,303, the firm received an allowance in a record time of 9 weeks and 5 days from filing.

Table 1: Examples of expedited patent application cases using Track One

Figure 1 depicts Track One pendency versus that of all USPTO patent applications.

Figure 1: Track One FY13 First Action Pendency Time (in Months) https://www.uspto.gov/sites/default/files/aia_implementation/fast_exam_table20130912v1017.pd

Patents 4 Patients

Patents 4 Patients, also referred to as the Cancer Immunotherapy Pilot Program, is a means for expediting patent applications related to cancer immunotherapy. Under this program, the application will receive an accelerated review with final decisions made in one year or less. Furthermore, the applicant will not be required to pay a petition fee.

To participate in this program, applicants must use the USPTO patent electronic filing system to file a grantable petition. Applications must include one or more claims to a method of treating cancer using immunotherapy. Also, this program is open to applications that have not yet received a first office action, applications where the petition is filed with a request for continued examination, or certain applications where the claimed immunotherapy is subject to an Investigational New Drug Application with the U.S. Food and Drug Administration (FDA). Patents 4 Patients has been in operation for over six years, and the program has been extended until June 30, 2022.

Patent Prosecution Highway

If an applicant has filed a foreign patent or Patent Cooperation Treaty (PCT) application and received a notice of allowance for at least one claim, the Patent Prosecution Highway (PPH) program may be a basis for expedited examination in the United States. The PPH program allows a patent applicant to take advantage of the work that has been done by other patent offices around the world. More specifically, it allows the applicant to request expedited examination after an application in another participating office receives a final ruling that at least one corresponding claim is allowed. The average pendency under the PPH program is 14.2 months. A request for accelerated examination under this program must be filed between the filing of the U.S. patent application and the start of examination. This process has helped millions of people to obtain patent protection more quickly.

Figure 2 compares pendency under PPH with that of all USPTO patent applications.

Figure 2: Patent Prosecution Highway FY13 First Action Pendency (in Months) https://www.uspto.gov/sites/default/files/aia_implementation/fast_exam_table20130912v1017.pd

COVID-19 Prioritized Examination Pilot Program,

The most recent pilot program is the COVID-19 Prioritized Examination Pilot Program, which is intended to promote innovation related to the COVID-19 pandemic. This program accepts 500 patent applications per year without requiring a fee for prioritized examination. However, on September 2, 2021, the USPTO announced that it will continue accepting applications for this pilot through December 31, 2021, even if more than 500 requests have already been approved. Under this pilot, after an application receives prioritization, the goal is to reach a final disposition within one year. This program is open to certain applications containing one or more claims to COVID-19 related products, where the claimed invention is approved by the FDA for COVID-19 use, and the requesting entity benefits from small or micro entity status.

Table 2 compares Track One, Patents for Patients, PPH, and the COVID-19 Prioritized Examination Pilot Program

Table 2: Comparison between expedited examination programs

Pendency Progress

The USPTO has been modernizing its quality assurance programs and IT infrastructure, including the use of new technologies, and providing detailed information about its progress to the public. These steps have laid the groundwork for the successful use of expedited patent examination programs, including Track One, Patents 4 Patients, PPH, and the COVID-19 Prioritized Examination Pilot Program. The USPTO’s expedited examination programs have boosted the agency’s ongoing efforts to lower the average total patent pendency time.

 

The Author

Raj S. Dave, D.Sc., J.D.

Raj S. Dave, D.Sc., J.D. a registered patent attorney in the United States, is the President & Founder of Davé Law Group (DLG), a full-service Intellectual Property law firm in Virginia. He is the President of LexpertConsilium, located in Bangalore, India. LexpertConsilium LLP is a back office of Davé Law Group and practices patent and trademark cases at the India Patent Office but does not practice Indian Law in Indian Courts. Dr. Davé is an Emeritus Resource Faculty, School of Law, Policy and Governance (SLPG), School of Maritime, Air and Space Studies (SMASS), Rashtriya Raksha University, National Security and Police University of India He is a Visiting Professor Southwest University of Political Science and Law, Chongqing, China. He is the Chairman of Indian Government’s Patent Facilitation Committee whose objective is to oversee the working of Patent Facilitation Centers in different Indian states. Dr. Davé is recognized as an “IP Star” by Managing Intellectual Property and the Legal 500 U.S. He has authored articles published in Duke Law & Technology Review, Yale Journal of Law and Technology, and Harvard Journal of Law and Technology, among others.

Raj S. Dave, D.Sc., J.D.

Sophia Keating is an intern at Davé Law Group. She is a sophomore at Thomas Jefferson High School for Science and Technology. She is the founder of a group called STEMinvent, which actively promotes science, technology, engineering, and math (STEM) in public education. She is a Girl Scout Silver and Bronze Award recipient for her leadership in STEM. She enjoys art reading, and travel.

Raj S. Dave, D.Sc., J.D.

Kyra Dhawan was an intern at Davé Law Group. Kyra has been instrumental in leading and successfully running ‘The Innovator’s Think Tank’ club for the Robert Frost Middle School students. She is particularly interested in intellectual property. With interests in sustainability, energy, and global warming, she is presently working on a couple of patentable ideas.

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 6 Comments comments. Join the discussion.

  1. MaxDrei September 7, 2021 8:44 am

    Naively, I supposed that a patent of high “quality” would be one that is not vulnerable, after it grants, to attacks on its validity. What worries me is that enhanced speed to issue is detrimental to “quality”. Which system is of higher quality a) apply for a patent and go straight to issue within 3 months, with no examination on the merits or b) full exam on the merits, leading to the issue of patents after, say, 3 years, all of which are robust against validity attack, post-issue?

    In this context, how do we know whether the PTO’s “Quality Assurance Program” is delivering patents of consistently high “quality”?

  2. Julie Burke September 7, 2021 2:33 pm

    I would like to heartily welcome Ms. Keating and Ms. Dhawan to the IP Community! Well done! I sincerely applaud you and Mr. Dave for providing this optimistic and accurate article as it pertains to patent pendency. From my experience, both inside and outside the USPTO, I agree that applications filed with prioritized examination requests are often promptly processed. Plus, prioritized applications often receive higher level (SPE or QAS) oversight during the examination process, which could arguably result in a more thorough examination process.

  3. Julie Burke September 7, 2021 2:50 pm

    @1. I share MaxDrei’s concerns over enhanced speed being achieved at the expense of quality.

    Beginning Oct 2020, the USPTO reduced the overall weight of given to quality in the examiner’s Performance and Appraisal plan (PAP) from 35% to 30% while the weight given to docket management (i.e., how quickly examiners move cases off their desk) increased from 20% to 30%. See Table 1 of the July 1, 2021 IPwatchdog article.

    Quality, Quantity and Pendency are of equal importance in the Examiner’s Performance Plan.

  4. Julie Burke September 7, 2021 3:05 pm

    I appreciate that this article was prepared based on interviews conducted with USPTO officials. Surely, none of those officials would have led our valiant team of writers astray by conflating quality with pendency?

    Note the link to ‘quality assurance programs’ in the first paragraph of this article.

    Click on that link and scroll down to the Quality Metrics section.

    See that first link called ‘Current Patent Examination Quality Metrics?’ Go on, click on it. It leads directly to the Patent Pendency data on the Patent Data Visualization Center. This page is devoid of any actual patent quality metrics. Nary a single quality stat to be had.

    Back in the day, PTO insiders would say Quality was spelled as Q-u-a-n-t-i-t-y.

    Now the USPTO hyperlink called ‘Current Patent Examination Quality Metrics’ on the ‘quality assurance programs’ page sends individuals over to the Patent Pendency page.

    Looks like Quality is now spelt as P-e-n-d-e-n-c-y.

  5. Anon September 7, 2021 4:10 pm

    To be cynical, why would such “front end” items be a concern given the “”back end” (and separately revenue generating) aspect of post grant review?

  6. Primary Examiner September 8, 2021 9:15 am

    @2
    “Plus, prioritized applications often receive higher level (SPE or QAS) oversight during the examination process, which could arguably result in a more thorough examination process.”

    Did you find this out from a current Examiner? Or is this public information?
    I am asking because I’ve examined a few of these myself, and was not informed that SPEs/QASs would be more involved for these applications. thanks.

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