By Christopher P. Singer --
Given the recent news of Governor Bill Richardson's withdrawal from consideration as Commerce Secretary, and the impending resignation of U.S. Patent and Trademark Office Director Jon Dudas, the incoming administration may be giving renewed attention and interest to the Department of Commerce and the USPTO in particular. On December 23, 2008, the U.S. Chamber of Commerce published a report which contains a number of recommendations to the incoming administration about how PTO policies and procedures could be improved. The report identifies specific issues confronting the USPTO, and eleven goals that should help improve the agency. For each goal, the report provides several ways in which the incoming administration can implement procedures that could help the USPTO to achieve these goals.
One can hope that this report will be considered seriously by the Obama administration, as the list of contributors has gravitas in areas of intellectual property and government administration (as the report notes, the contributors have over 200 years of combined experience with the USPTO). The contributors include Dana Robert Colarulli, Q. Todd Dickinson, Nicholas P. Godici, Brad Huther, Esther Kepplinger, Michael K. Kirk, Stephen G. Kunin, Gerald J. Mossinghoff, Charles E. Van Horn, and Herbert C. Wamsley. Perhaps some of these contributors can form the basis of a short list of candidates for the next Director of the USPTO?
The eleven goals identified in the report are listed below, along with some of the suggested ways in which those goals could be achieved.
1. Improve the Quality of U.S. Patents
To help maintain and improve the quality of the patents issued by the USPTO, the report suggests a number of potential solutions, such as: (1) introducing fee and order of examination incentives for applicants that participate in (a) pre-search interviews to discuss the content of the application and the search strategy and (b) pre-first action interviews to discuss search results and how they relate to the claimed subject matter; (2) expanding and enhancing PTO-based training programs for examiners; (3) developing a cooperative effort between patent users and the Office to develop models for drafting high-quality patent applications that meet the requirements of patentability, particularly 35 U.S.C. §§ 101 and 112; (4) improving the quality of searching resources to examiners; (5) revising existing methods or developing new methods for measuring examination quality as well as patent quality; (6) reviewing restriction practice and its impact on the backlog and loss of rights for inventors because of increased filing costs; (7) reevaluating the duty of disclosure without forcing new requirements upon applicants; and (8) ensuring that claims are adequately supported by the specification.
2. Provide Adequate Resources
The report concludes that in order to even begin addressing the mounting application backlog, the USPTO needs adequate funding, and advocates for a legislative remedy to end future fee diversion. The report also suggests that funds raised by increasing user fees, as circumstances require, would provide additional funding for critical new initiatives that could improve the quality and timeliness of application examination.
3. Reform the Examiner Production System
The report states the current production system, unchanged since 1976, is a primary factor creating dissatisfaction among the examining corps. The report recommends several possible solutions such as (1) reviewing the current system and adjusting the goals so they are more equitably established in light of the relative complexity of various technologies; (2) revising the count system to change the credit given for certain actions, such as reducing credit for continuations, while allowing for more time for first-filed cases; (3) providing more time after final rejection to consider additional amendments and arguments without the need for RCE filings; (4) considering a flat goal awards program; (5) reconsidering counts given in an application, such as whether a first action and disposal should be counted equally, whether other actions should be given a count, and additional counts given for initial patentability determinations; and (6) encouraging pre-search and pre-first action interviews in order to improve efficiency.
4. Improve Timeliness of Actions
To help improve the PTO's timing in issuing administrative actions, the report suggests implementing several actions including: (1) continuing to hire, train, and retain qualified examiners to address increasing workload demands; (2) identifying the most relevant prior art by: (a) outsourcing prior art searches to qualified vendors, (b) improving communication and cooperation between foreign examining authorities in corresponding foreign applications, and (c) considering options that would encourage applicants to conduct searches and timely submit search results; (3) expanding the First Action Interview pilot program and the use of First Action Interview pilot program telephone interviews; (4) recognizing search and/or examination results from first-filing offices; and (5) improving the atmosphere for the examining corps by revising the Second-Pair-of-Eyes Review program.
5. Strengthen the Relationship Between the PTO and Users
The report states that the PTO has in the past few years formulated policies without consideration of any outside input, which has created an atmosphere of distrust between the PTO and its users. The report recommends that this relationship can be improved by opening the lines of communication to create a more cooperative atmosphere. Potential solutions include: (1) clearly stating the problems that the PTO faces and holding public hearings and town hall meetings to allow for public participation in creating solutions to these problems; (2) increasing speaking opportunities for senior level PTO employees to increase awareness of issues and constraints the PTO faces; (3) making use of advance notices of proposed rulemaking when seeking to make significant changes to current practices; and (4) increasing the transparency of PTO operations, including publishing information about application pendency, the number of RCEs, appeals, reexaminations, etc.
6. Enhance Organizational Management
The report also believes that the PTO should be established as a governmental corporate entity, which would help to enable the Office to adjust its operations more quickly and effectively than it can under its current structure as a performance-based organization.
7. Appoint a Well-Qualified Undersecretary and Director
As to Mr. Dudas' future replacement, the report concludes that the PTO's next director should be "a top-caliber, knowledgeable intellectual property executive" with a background and skill set that would include experience in patent and trademark prosecution or litigation, a knowledge of copyright issues, a record of successful leadership and management of a large entity, experience in congressional and international IP policy issues, and experience with strategic planning, budgeting, and financial management.
8. Improve the Retention of Patent Examiners
The report recognizes that simply hiring new examiners will not be sufficient to address the problem of the application backlog -- the Office has to work harder to retain experienced examiners. To help retain and develop an experienced examining corps, the report suggests: (1) reviewing and revising the current production goal system based on complexity of technology and volume of searches; (2) increasing mentoring programs; (3) establishing required meetings among examiners to discuss recent case law and technological developments; (4) improving communication between management and examiners; (5) providing more work flexibility; (6) increasing the number of senior level positions; (7) revising the retirement plan; and (8) reviewing and evaluating hiring and training practices.
9. Permit Deferred Patent Examination
The report suggests that the application backlog would likely be reduced if a system of deferred examination was established. While deferred examination could introduce public uncertainty about the status of pending applications, the potential benefit of such a system to the backlog as well as applicants would likely outweigh its drawbacks.
10. Adjust Fee Schedule
The report suggests that the fee schedule could be adjusted to provide incentives for a more efficient examination. Some suggestions include reduced fees for electronic filings; increasing fees for successive continuation or RCE filings; increasing fees for additional independent or total claims; reducing or eliminating multiple dependent claim fees; and charging fees for an IDS that contains more than 25 references or fees for each additional reference above 25 cited in an IDS.
11. Enhance Examination Efficiency by Reforming Incentives
In order to have an efficient patent system, the report states that the PTO should make a patentability determination on an application in as few actions as possible. The report suggests that the PTO could increase efficiency by analyzing how RCE and continuation filings have impacted the backlog, and more particularly, the motivation examiners and applicants have for making such filings. If it would benefit efficiency, the report suggests that the PTO could adjust the credit given to examiners for RCE filings, and how to incentivize applicants to accelerate resolutions to pending applications.
• "BIO Gives President-elect Obama Its Ideas on Patent Reform," January 6, 2009
Chris:
Thanks for this very refreshing bit of sanity that is greatly appreciated here. It seems like all the frantic rush to *Reform* US patent law will be in large part meaningless or much worse, unless the real root of the "problem" is addressed first, that being a somewhat intelligent and perceptive management of the USPTO. In my opinion this latter has been woefully lacking for the past several years. I sincerely hope that someone in the Obama transition team is paying very close attention to critical issues like those enumerated in your article, and that they will actually take the time to consider the real issues at hand in making the USPTO into an efficient and powerful part of the American economic engine, that has served us all so well in the past.
Posted by: Stan E. Delo | January 09, 2009 at 03:48 PM