By Alex Nie, Foley & Lardner LLP
This article is part of our Fall 2010 edition of Legal News: China Quarterly Newsletter, Eye on China.
One of the biggest complaints facing the U.S. Patent and Trademark Office (USPTO) concerns the tremendous backlog in the examination of pending patent applications. Currently there are about 1.2 million pending applications, with more than 700,000 applications that have not yet received a preliminary examination. According to University of Missouri School of Law Associate Professor Dennis Crouch, as reported on his Patently-O Web site, the average application pendency is about 46.1 months, with 17.5 months being attributed to unreasonable delay by the USPTO. In response to the backlog of applications, the USPTO has implemented a strategic plan intended, at least in part, to address this problem.
One goal set out by the strategic plan is to optimize patent examination quality and timeliness. To achieve this goal, the plan identifies a number of priorities, two of which are of particular relevance:
The USPTO recognizes that it faces significant challenges in meeting the goal of optimizing patent examination quality and timeliness. Challenges recognized in the plan include the USPTO’s lack of funding authority to support performance objectives, the sheer volume of applications, the antiquated IT infrastructure, and the difficulties in hiring and retaining examiners. Nevertheless, the plan sets out a few seemingly reasonable approaches to address the challenges.
In one such approach, the USPTO will in fiscal year 2010 start to revise its patent examiner production (count) system. The new count system encourages early identification of patentable subject matter and provides incentives to encourage examiners to do a high-quality first office action. By doing so, the plan hopes to achieve early disposition of the applications.
Further, under the plan, patent applicants will have more control over the examination process. For example, an applicant may expressly abandon an application that is not important in exchange for an accelerated examination of an important application. It will be interesting to see how this is implemented — specifically, whether it will be abused by the applicants by simply filing more non-important applications as potential safeguards.
Another approach identified by the plan is to hire more examiners. In the plan, the USPTO sets its goal to hire 250 experienced examiners in fiscal year 2010 and 1,000 examiners in the following two fiscal years. The plan also sets out to achieve the strategic goal of optimizing patent quality and timeliness through improved international cooperation and work sharing. Specifically, the plan proposes more effective uses of the Patent Prosecution Highway (PPH), the Patent Cooperation Treaty (PCT), the Strategic Handling of Applications for Rapid Examination (SHARE), and cooperation of the IP5 — the USPTO, the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and China’s State Intellectual Property Office (SIPO).
Overall, the plan recognizes the challenges and proposes realistic approaches to address those challenges. The goals outlined in the plan, however, are still highly ambitious. It was noted that similar goals were included in the USPTO’s 2007 – 2012 strategic plan, but the USPTO is still far from achieving them. The new plan, nevertheless, manifests the current administration’s commitment to an improved patent prosecution system.