Posts Tagged: "patent backlog"

Earlier today Chief Judge Paul Michel (ret.) of the United States Court of Appeals for the Federal Circuit testified before the Subcommittee on Intellectual Property, Competition and the Internet, a subcommittee of the House Committee on the Judiciary. In a nutshell, Chief Judge Michel explained that “[t]he PTO desperately and immediately needs: several thousand additional examiners, dozens of additional board of appeals members, and major modernization of its IT systems, which are antiquated, inadequate and unreliable.”

The log jam in patents issuances is not the only impediment to start-up job creation. Although it is certainly a big one. Tax and regulatory burdens on start ups have reached a critical mass in the last 10 years. A fact recognized by President Obama when he signed an Executive order last Tuesday ordering the removal of burdensome regulatory rules on business. Also a problem are the post 9-11 immigration policies that are driving many of the world’s best and brightest scientists and engineers to other countries. But the biggest job killer beside the patent backlog is the systemic destruction of our high tech manufacturing capacity.

Specifically, we learned that the USPTO projects an average first action pendency of 23 months by the end of fiscal 2011, that participating in the First Action Interview Pilot Program more than doubles the likelihood of getting a first action allowance, that Track 1 rules are imminent with rules for Tracks 2 and 3 to follow and during FY 2010 nearly 6,000 USPTO employees worked from home at least a portion of their work week. We also heard an ominous and declarative statement from Kappos, who told the House Subcommittee on Intellectual Property that the diversion of fees will cause the patent backlog to rise.

Yesterday Director Kappos deviated a bit from his routine and utilized a powerpoint presentation, which was titled: “The USPTO by the Numbers: Progress and Reform at Our Nation’s Innovation Agency.” While some of the slides tell what appears to be a remarkable turn around story, the real news to come out of Director Kappos’ presentation is that he is challenging the Patent Office to get down to a patent application backlog of 650,000 by the end of fiscal year 2011. To paraphrase Sam Cooke: what a wonderful world it would be!

Director Kappos was also asked whether there were any plans to allow the community to access the patent search platform that is available to patent examiners. Kappos explained that it was simply not possible for the Patent Office to provide access to its systems to a greater extent than already allowed because the IT systems are “too fragile.” In fact, the state of disrepair that the computer systems at the USPTO are in is almost unfathomable. Particularly when the USPTO is collecting $1 million every day that it is unable to use. So they get the work, but not the fees. A recipe for the backlog and pendency going in the wrong direction.

One question in particular that stood out to me was the question about hiring at the USPTO. Director Kappos was asked to give us an idea on what the plans are for hiring examiners to the USPTO. Kappos started with “We want YOU to come work for the USPTO.” Laughter abounded. Dickinson quickly picked up on this saying: “Uncle Sam wants YOU!” More laughter all around. Kappos went on to explain that they are seeking experienced, well seasoned patent attorneys to come work for the USPTO. They want to hire another 1000 examiners. Dickinson then joked “Ah, so you weren’t kidding when you said you wanted them to work for the USPTO?”

Hopefully the seemingly modest successes of team Kappos in fiscal 2010 will be viewed for what they are, which is rather extraordinary, by our leaders in Washington, DC. With all the odds against them, having to fight daily for adequate funding, fewer patent examiners and a Congress that STILL siphons money paid by innovators away from the Patent Office, team Kappos was still able to increase allowances by 5.3% and dent the backlog. Can you imagine what they could do with adequate funding?

In this edition of News, Notes & Announcements, patent attorneys asked to participate in an inequitable conduct study, BIO seeks session proposals for 2011 Convention, Huffington Post and other popular press starting to report that patent backlog is costing jobs, the Second Circuit refuses en banc rehearing in reverse patent payments case and PLI sponsoring yours truly on a speaking tour.

Patent applications as a whole over the past 10 years have had an average allowance to rejection ratio of about 0.3. We arrived at this ratio by generating a list of 300 randomly selected application serial numbers in the 10/, 11/, and 12/ series, and individually reviewing the transaction histories for each serial number. An allowance to rejection ratio of 0.3 corresponds to about one allowance for every three rejections. First office actions have a somewhat lower allowance ratio than the average. This is consistent with the common knowledge that applicants will take a more aggressive position with the claims that they file relative to the amended claims they present after a rejection. The allowance to rejection ratio for second and higher rejections remains relatively constant. This has the somewhat disturbing implication that practitioners and examiners are not getting any better at understanding each other as prosecution progresses. If practitioners and examiners were learning from each rejection – response interchange, then the allowance ratio would increase for each succeeding office action.

Straight from the “it’s about time” department comes breaking word that the so-called popular press are finally identifying the most under reported news story of this recession. The United States Patent and Trademark Office of foundering and it needs more money in order to do its job. Despite their lip service to innovation and job creation, politicians seem to year after year leave the Patent Office under funded and incapable of satisfying its purpose. But thankfully CBS did a 2 minute and 36 second segment on the crisis this past weekend!

Earlier today the Wall Street Journal gave front page space to a story relating to the United States Patent and Trademark Office. Widely regarded as one of the “papers of record” in the United States, one might expect that the Wall Street Journal had brought its considerable clout to an important issue plaguing our time, such as an horribly under funded Patent Office that is holding innovation hostage, costing America perhaps millions of jobs. NO! Don’t get me wrong, every tabloid should have front page news story about pot, medical marijuana and have an image of a VW bus over the tag “the Canny Bus,” as the Journal did earlier today. Call me crazy, but I expected more from the Wall Street Journal.

In this interview we talk about how two Presidents that are extremely different on so many fronts, Presidents Reagan and Obama, are pursuing quite similar strategies regarding the Patent Office. We also talk about the importance of good working relations between patent examiners and the patent bar, the enormous backlog of applications at the Patent Office, the Patent Office process for handling decisions and issuing guidance in situations such as the recent Supreme Court decision in Bilski v. Kappos and what it is like to be Commissioner for Patents and the Director of the Patent and Trademark Office.

On May 19, 2010, USPTO Director David Kappos and China’s State Intellectual Property Office (SIPO) Commissioner Tian Lipu signed a Memorandum of Understanding (MOU) on comprehensive bilateral cooperation on patents. The signing took place during a signing ceremony held at the USPTO campus in Alexandria, Virginia. Second, in a separate and seemingly unrelated item, the USPTO also announced today that it would eliminate the fee for the petition to participate in Patent Prosecution Highway (PPH) programs. The elimination of the PPH petition fee is expected to encourage greater PPH participation by patent applicants. The good news is that yet more is being done to address the backlog and pendency. But I am still hoping for a plan aimed straight at independent inventors and start-up businesses here in the U.S.

The reality is that unless and until Congress steps up to the plate and does something, which seems extraordinarily unlikely, the Patent Office will be left to attempt to piecemeal together solutions. So while no one solution can or will solve all of the problems plaguing the patent system, if cascading solutions are employed at least some applicants can be helped and at least some applications can be accelerated. Of course, the name of the game today is job creation, so I propose a creative way to accelerate patent applications out of order upon proper showing that jobs will be created, and focus my suggestions on those companies that are most likely to create jobs; namely those 5 years or younger and with 99 or fewer employees.

This unique initiative seeks to reduce the backlog of patent applications by getting rid of those that are no longer important to applicants or are of marginal value. In exchange for giving up on certain applications and abandoning them another application will be advanced out of order to the front of the examination queue. Over and over again the message directly from Kappos and his top Lieutenants is that the backlog is costing America high paying jobs. This initiative picks up on the recently released PTO study that concluded that high-tech jobs are high paying jobs, innovators rely on patents and an overwhelming majority of Venture Capitalists say that they want to see issued patents before they invest in start-up companies. The expanded Exchange Program is yet another attempt to help give the Patent Office the tools necessary to unleash commercially viable innovation into the marketplace so that funding can be obtained, jobs created and innovation can play its role in economic recovery.