Present and Future Perspectives of the USPTO

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Present and Future Perspectives of the USPTO San
Diego Intellectual Property Law Association June
6, 2007 John Love Deputy Commissioner for
Patent Examination Policy
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Topics

• Statistical Update Why FY 2006 was a
  record-breaking year and Patents Operations
  Update for FY 2007
• Strategic Planning the Future of the USPTO
• On-Going Quality Initiatives and Programs
• Fulfilling the goal of continuous improvement

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• STATISTICAL UPDATE
• Why FY 2006 was a Record-Breaking Year
• and
• How we are Progressing in FY 2007

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FY 2006 Quality Results

• Improving Quality is our Highest Priority

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Quality

• 2006 goals lt4 allowance error and gt86
  in-process compliance
• 2006 results 3.5 allowance error and 90.0
  in-process compliance
• 2007 goals lt4 allowance error and gt88
  in-process compliance

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Mid-FY 2007 Quality

• 2007 goals lt4 allowance error and gt90
  in-process compliance

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Allowance Error Rate
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Allowance Rate
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Error and Allowance Rates
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Performance Measures FY 2002-FY 2006
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End-of-Year Statistics (FY 2006) Mid-Year (FY
2007)

• As of September 30, 2006
• 701,147 applications awaiting first action by the
  examiner
• 4883 UPRD examiners
• 397 supervisors
• 29 patent academy trainers
• 22 TC directors

• As of March 2007
• 714,476 applications awaiting first action by the
  examiner
• 5077 UPRD examiners
• 405 supervisors
• 46 patent academy trainers
• 20 TC directors

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UPR filings

• FY 06 419,760
• Growth of 9.2 from 05
• Mid 07 217,233
• FY 07 expected filings 445,923

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UPR Production

• 2006 goal 311,913 Balanced Disposals (BDs)
• 2006 results 315,019 BDs
• 2007 goal 323,900 BDs

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Patent Pendency - EOY FY 2006 / Mid-Year FY 2007

1 Average 1st action pendency is the average
age from filing to first action for a newly filed
application. 2 Average total pendency is the
average age from filing to issue or abandonment
of a newly filed application.
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Hires and attritions
Staff includes Examiners, SPEs and academy
trainers. As originally planned. Hiring target
raised to 1200 during FY 2006.
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Electronic filing

• New EFS-Web system launched March 2006
• allows PDF-based submissions
• replaced XML-based system
• 2005 result 2.2 of applications filed
  electronically
• 2006 goal 10 of applications filed
  electronically
• 2006 result 14.3 of applications filed
  electronically
• FY 2007 results to date over 50 of applications
  filed weekly are received through EFS-Web over
  700,000 (total) follow-on papers and new
  applications received

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• STRATEGIC PLANNING
• AND
• THE FUTURE OF THE USPTO
• http//www.uspto.gov/web/offices/com/strat2007/

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STRATEGIC PLAN 2007-2012

• Strategic Plan released to the public week of
  March 28, 2007
• Plan is the outcome of a collaborative process
• Plan builds upon the record-breaking progress
  made during FY 2006.
• Patents Role in Strategic Plan - Optimize Patent
  Quality Timeliness

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USPTO Strategic Goal 1 Optimize Patent Quality
Timeliness

• Patents must address many challenges and
  opportunities, for example
• Confidence in patent quality
• Number and technical complexity of patent
  applications
• Hiring and training of new patent examiners
• Best and necessary use of electronic tools and
  resources
• Examination Alternatives

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Patents Strategic Plan Objectives

• 1 Provide high quality examination of patent
  applications
• 2 Improve and integrate existing electronic
  systems to promote full and electronic patent
  application processing implement better/more
  secure systems
• 3 Improve the quality and timeliness of patent
  examination by exploring a range of approaches to
  examining applications

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A Sample of the Strategic Plan Initiatives

• Patent Training Academy
• Expand telework explore establishing
  regional/remote/local USPTO offices
• Explore the development of alternative approaches
  to examination in collaboration with stakeholders
• Peer Review of Published Applications

• Enhance Search Quality
• Design implement a comprehensive quality system
• Examination reform through rule making to focus
  examination enhance information exchange
• Continued increase of e-filing

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Patents Teleworking Laptop Programs

• 506 examiners started the Patents Hoteling
  Program in 2006
• 500 more planned to begin in 2007
• Program allows examiners to work from home 4 days
  per week with USPTO electronic tools
• 297 laptops with remote access software
  distributed on pilot to work overtime
• 1500 examiners signed up to receive laptops
• Program allows examiners to work overtime hours
  from home

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Peer Review Pilot

• Post volunteered published applications to
  non-USPTO website for the purpose of
  collaborative review
• Using established Internet peer review
  techniques, will determine up to 10 best
  references
• Supply to USPTO through 37 CFR 1.99 submission
• For pilot, only applications classified in TC
  2100
• Pilot expected to launch June 2007

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Proposed Rules Changes

• Claims and Continuing Applications
• Notice of Final Rulemaking sent to OMB
• Changes to Practice for Continued Examination
  Filings, Patent Applications Containing
  Patentably Indistinct Claims, and Examination of
  Claims in Patent Applications
• Information Disclosure Statements

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Policy/Practice Initiatives

• Alternative Examination Products
• Patentee / Trade Organization / User Input
• Wants and Needs for IP Protection
• Different Levels of Examination / Protection
• Deferred Examination
• Peer Review
• Collaborative Examination
• Alternative Claims
• Notice of Proposed Rule Making
• Input on Potential Solutions

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Patent Reform Proposals and Impact of Recent
Decisions

• Current Statutory Proposals in Congress
• Case Law under consideration
• KSR International Co. v. Teleflex Inc.
• Decisions impacting 35 USC 101

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• QUALITY
• Fulfilling the goal of continuous improvement

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On-Going Quality Initiatives

• Interviews before First Action
• Second Pair of Eyes
• In Process Reviews
• Appeal Specialists
• Pre-Appeal Brief Conferences
• Appeal Conferences

• GS 12 Certification Exam
• Primary Examiner Recertification
• TC Targeted Areas of Review
• New Patent Examiner Training Academy
• Central Reexamination Unit
• Accelerated Examination

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Interviews Before 1st Office Action

• Normally granted in continuing or substitute
  applications
• In all other applications interview will be
  granted if the examiner determines that such an
  interview would advance prosecution of the
  application
• Examiner may require applicant requesting
  interview to provide a paper with a general
  statement of the prior art and no more than three
  references believed to be the closest prior art
  and how the broadest claim is distinguished over
  these.

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Second Pair of Eyes

• Focuses on reviewing work product at time of
  allowance
• Tool to gather information for creating training
  modules
• May be performed throughout a TC or in specific
  areas

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In Process Reviews

• Initiated formally in FY 2003
• Statistically significant randomly selected
  applications are reviewed
• Focus of evaluation
• Whether rejections are proper
• Whether a proper rejection has not been made
• Evaluate search quality

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Appeal Specialists

• TQAS position in each TC
• May be a conferee for pre appeal and appeal
  conferences
• Major duties include coordinating appeal matters
  throughout the TC
• Identify trends and training needs

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Pre-appeal brief conferences

• Program began July 12, 2005
• Extended February 7, 2006
• Over 10,000 conferences requested approximately
  9700 conferences held
• During FY 07, approx. 3650 conferences held

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Pre-appeal brief conferences
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Appeal Conferences

• Appeal conference required in every application
  having a brief
• Over 9,000 conferences conducted since June 2005.
• Decided to proceed to the BAPI nearly 55 of the
  time
• Conferees include
• Examiner
• SPE
• Appeal Conferee (appeal specialist, another
  primary or QAS)

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Affirmance Rate at the BPAI
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GS 12 Certification Exam

• Implemented in FY 2004
• Ensures that examiners have up to date knowledge
  of Office procedures and policies
• Confirms through testing that examiners have
  achieved skills to merit the grant of legal
  competency and negotiation that occurs with a
  promotion to GS-13

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Primary Examiner Recertification

• Established in FY 2004
• Applicable to all GS-13 through 15 examiners
• Requirements
• Attendance of legal training
• Testing based on the legal training
• Periodic expanded review of work product

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TC Targeted Areas of Review

• Technology Centers focus on areas where greatest
  area of impact is made
• May Include
• Augmenting in-process reviews
• Target second pair of eyes review in specific art
  areas
• Target specific actions for review (first office
  action, finals, etc.)

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Training Academy

• Six classes hired through training academy in
  2006, totaling over 600 new examiners
• Four classes hired and in place in the
  Training Academy for FY07.
• An additional 7 classes to be hired in FY07.
• Foreign Examiners In Residence (FEIR)
• Global Intellectual Property Academy (GIPA)

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Training academy

• Evaluating existing processes, including
• Training delivery
• Program effectiveness
• Administrative oversight/structure
• Seeking input on future program development and a
  permanent structure

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Central Reexam Unit (CRU)

• Initiated in July 2005 to improve quality
  timeliness of patent reexaminations
• Currently, approximately 1000 total ex parte
  reexamination proceedings pending in the CRU
  approximately 180 inter partes pending in the CRU
• CRU hiring plan

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Central Reexam Unit (CRU)

• 30 Primary Examiners
• Varied technical expertise
• Reexam experience
• Additional legal training
• Motivated and collegiate
• Quality focused

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Accelerated Examination

• Change in practice effective August 25, 2006
• Over 370 AE applications received 73 in April
  07
• First patent, prosecuted in compliance with AE
  program, issued March 13, 2007
• Guidance provided on the USPTO web site at
  http//www.uspto.gov/web/patents/accelerated/

Henry Sacco (Brother International) and David
Schlitz (Baker Botts), look on as Jon Dudas signs
the first accelerated exam patent.
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Accelerated Examination - Tips

• Search the claimed invention. The petition may
  be dismissed if the search is not commensurate in
  scope with the claims
• Search should include U.S. patents publications,
  foreign patents and publications, and non-patent
  literature.

• Show support in the specification and/or drawings
  for each limitation of each claim. Be specific.
  This must also be done for any application whose
  benefit is claimed under Title 35.
• Clearly and specifically identify the limitations
  in each claim that are disclosed in each
  reference. A chart is a clear, convenient
  format.

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Accelerated Examination - Tips

• Provide the text-search logic. A mere listing of
  terms will not suffice

• Clearly point out by specific claim language how
  each claim is patentable over each reference. 

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Contact Information

• John Love
• Deputy Commissioner for Patent Examination Policy
• e-mail john.love_at_uspto.gov
• Phone [phone]

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Thank you.