By Donald Zuhn --
On Wednesday, U.S. Patent and Trademark Office Director David Kappos announced a number of proposals
for changing the examiner "count system," the methodology for determining
the amount of time an examiner is given to complete a patent examination and the
amount of credit an examiner is given for completing various stages of an
examination. The count system,
which was created in the 1960's, was last revised in 1976.
The proposals announced by Director Kappos were developed by a task
force consisting of USPTO senior managers and leadership from the Patent Office
Professional Association (POPA) -- the examiner's union. Pursuant to a directive from Secretary
of Commerce Gary Locke to "adopt an ambitious agenda to address the
significant challenges at USPTO," Director Kappos stated that USPTO senior
management had "worked closely with labor representatives to propose a
long-overdue transformation of the count system." During his nomination hearing before
the Senate Judiciary Committee in July, Director Kappos testified that he
planned to raise morale by completely remaking the count system, which he said
"needs to be fixed" (see
"Senate Judiciary Committee Hears from Director Nominee"). During the hearing, Director Kappos stated
that "as I understand it, the examining corps hates the count system the
way it is," and "the applicant community . . . hates the count system
the way it is because it results in dysfunctional behavior." He also informed the Committee that
Secretary of Commerce Gary Locke had specifically asked him to fix the count
system.
The count system has been long been the target of criticism by many in
the patent community. In a BIO 2009
panel session in Atlanta last May, Q. Todd Dickinson, the Executive Director
for the American Intellectual Property Law Association (AIPLA) and former
Director of the USPTO, contended that the count system was in need of an update
(he also advised session attendees that such an update would not come cheap, as
the 1976 update of the system cost $20 million) (see "Docs at BIO: Panel Offers Suggestions for Fixing the
USPTO"). A year earlier at a BIO 2008 panel
session, Esther Kepplinger, the Director of Patent Operations for Wilson
Sonsini Goodrich & Rosati and a former USPTO Deputy Commissioner, noted
that a George Mason study found that while divisional and continuation filings
had remained fairly stable over the past seven years, RCEs had increased from
8.3% to 19.6% of total filings.
Ms. Kepplinger asserted that this result was an indication that some
examiners had been "gaming the count system" (see "Docs at BIO: Panel Discusses Impact of USPTO Rules
Changes and Patent Reform Legislation on Biotech Patenting"). During an oversight hearing on the
USPTO held by the House Subcommittee on Courts, the Internet, and Intellectual
Property in February 2008, the count system also drew criticism from POPA President Robert
Budens (see "POPA President
Critical of USPTO During House Subcommittee Oversight Hearing"). Earlier
today, Hal Wegner, a partner at Foley & Lardner LLP and professor at George
Washington University Law School, noted in his e-mail newsletter that the proposed changes come
"[a]fter more than a generation
of recognition by all insiders in the patent field that the 'count' system is
at the very heart of the backlog problem at the PTO with a ripple effect that
has led to desperate measures such as the notorious 'Continuation Rules' and
the Tafas litigation."
According to the USPTO release, the proposed changes are intended to:
• Set the foundation for long-term pendency improvements.
• Increase customer satisfaction by incentivizing quality work at the
beginning of the examination process.
• Encourage examiners to identify allowable subject matter earlier in
the examination process.
• Rebalance incentives both internally and externally to decrease
rework.
• Increase examiner morale and reduce attrition.
The Office announcement also notes that the proposed changes are "intended
to be part of an iterative process of improvements to the count system,"
and that "[t]he task force will measure the effects of these changes and
gather internal and public feedback, and will meet on a regular basis to
monitor progress and consider additional changes."
A 25-page presentation regarding the task force's proposal can be found
here. The proposed changes discussed in the presentation include:
• Shifting more credit to a First Action on the Merits (FAOM) to support
compact prosecution.
• Reducing credit for Requests for Continued Examination (RCEs).
• Allotting more examination time per application (adding 2 hours per
"Balanced Disposal").
Among the many details provided in the presentation is a comparison of
the current count system with the system being proposed (see p. 6 of presentation; click on table to enlarge):
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