By Donald Zuhn --
Last week, Science Progress, a semi-annual journal published by the Center for American Progress, a liberal think tank headed by John Podesta, former White House Chief of Staff under President Clinton (as well as recent co-chairman of the Obama-Biden transition team), issued a series of reports on the U.S. patent system. The series, outlined in an article entitled: "Patent Reform 101," consists of four reports:
• "Improving the Effectiveness of the U.S. Patent and Trademark Office: Recommendations for Reform," by Gerald Mossinghoff and Stephen Kunin;
• "Patent Trolls Erode the Foundation of the U.S. Patent System," by Daniel McCurdy; and
• "Global Patent Protection: The International Patent System and the New Administration," by Bruce Lehman.
Today, we discuss the second report in the series (subsequent Patent Docs posts will address the remaining reports). In the series' second report, Gerald Mossinghoff and Stephen Kunin examine four recommendations for reforming the U.S. Patent and Trademark Office. In particular, the authors recommend:
• Providing adequate financial support to the USPTO;
• Improving the USPTO's decision-making process; and
• Establishing work-sharing arrangements with other national and regional patent offices.
The authors begin by endorsing a National Academy of Public Administration (NAPA) recommendation that the USPTO be restructured as a government corporation under the Government Corporation Control Act of 1945. As a government corporation, the Patent Office would be: exempt from hiring ceilings, able to set and revise fees, allowed to borrow for needed capital investments, and permitted to access corporate revenues without needing annual appropriations. The authors suggest that a "corporate" USPTO would no longer be subject to "the political vagaries of the appropriations process," and would therefore be able to establish pay and benefits systems that would enable the Office to compete more effectively with the private sector.
Citing a report by the National Academy of Sciences, which states that "[a]pproximately $638 million in [USPTO] revenue over 10 years and an estimated $100 million in fiscal year 2004 [were] spent on other governmental activities," the authors recommend that Congress permanently end diversion of applicant fees. The authors state that "[h]igh-quality patents depend absolutely on a high-quality workforce of highly trained and dedicated professional patent examiners," and contend that fee diversion is antithetical to maintaining such a workforce. The authors also cite an NAPA report that concludes that the current backlog of unexamined patent applications is the direct result of fee diversion, noting that "[h]ad the USPTO not experienced diversions of $680 million of user-fee revenues during the fiscal year 1990 to 2004 time period, then the time that it takes to examine a patent application would have averaged slightly over 21 months as compared with the 30 months to 40 months that it currently takes."
While the USPTO may have little control over the first two recommendations presented in the report, the authors do not allow the Office to go unscathed. Noting that the USPTO has "[i]ncreasingly over the last three to four years . . . formulated new policies, rules, practices and procedures without any signifcant participation from its constituents," the authors stress that the Office needs to "revise its current way of conducting business by making a concerted effort to engage its constituent groups early in the decision-making process by explaining the problems confronting them and soliciting public ideas before proposing new policies, rules, practices, and procedures."
The authors' final recommendation is that the USPTO continue to enhance its work-sharing arrangements with other patent offices. As reported by Patent Docs previously (see, e.g., #11 of our "Top Stories of 2008" series), the Patent Office has been actively seeking work-sharing arrangements with other patent offices. While the USPTO's rulemaking practices have been justifiably criticized by patent practitioners and applicants, the Office's work-sharing efforts to date are to be commended. Last year alone, the USPTO expanded its Patent Prosecution Highway (PPH) program to include pilots with the Canadian Intellectual Property Office (CIPO), Korean Intellectual Property Office (KIPO), IP Australia (IPAU), European Patent Office (EP), and Danish Patent and Trademark Office (DKPTO); extended its PPH pilot program with the CIPO; entered into an agreement with IPAU, in which the IPAU will act as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for certain International applications filed with the USPTO Receiving Office; added the KIPO as a participating foreign patent office in the Priority Document Exchange (PDX) system; initiated the "Triway" worksharing program between the USPTO, EPO, and JPO; initiated the "New Route" worksharing program with the JPO; announced a new worksharing initiative with the KIPO, EPO, JPO, and State Intellectual Property Office of the People's Republic of China (SIPO); and released information about a Common Application Format (CAF) that arose out of an agreement between the USPTO, EPO, and JPO at the 25th Annual Trilateral Conference.
The authors conclude the report by stating that "[a]doption of the recommendations included in this essay, together with adoption by Congress of the patent reform measures on which there is broad consensus today, will result in a far more effective, responsive, and robust U.S. patent system geared toward the grant of quality patents in a timely manner."
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