National Law Journal Editorial Questions USPTO Three-Track Examination Proposal

By James DeGiulio --

Earlier this summer, U.S. Patent and Trademark Office Director David Kappos announced a proposal for a three-tiered patent prosecution regime that could be instituted in the Office (see "USPTO Director Announces New Examination Options").  The new regime will provide for an accelerated examination track, a standard (status quo) track, and a delayed examination track.  Of course, there will be appropriate fees depending on the examination track selected.  For more information on the three-track proposal, see "USPTO Publishes Notice Regarding Enhanced Examination Timing Control Initiative."

The three-tiered examination proposal is intended to address the application backlog at the USPTO and its alleged negative impact on innovation.  However, according to an August 16 editorial published in the National Law Journal ("New patent regime won't help"), this proposal is vastly insufficient to remedy the application backlog and will merely let richer customers get faster patent reviews by paying more for the privilege.

The editorial, written by David Feigenbaum (at left), a principal at Fish & Richardson in Boston, vigorously rejects the proposal as any type of solution to the USPTO's application backlog.  Mr. Feigenbaum argues that while the three-track proposal may result in greater fee collections from some applicants, a complete overhaul of the patent system from Congress is the only way to truly address the backlog.  The source of the backlog, according to the author, is the interaction with patent examiners under the current system, calling the exchange "overly iterative, done on paper, gated by arcane time periods for action and delayed by almost endless deadline extensions."

Mr. Feigenbaum places the responsibility for reform squarely on Congress, charging them with the task of changing a system that is "tailored to be unresponsive to modern technology and work styles."  None of the current proposals go nearly far enough, according to the author of the op-ed piece.  The three-tiered proposal, as well as other so-called patent reform proposals, are described as merely "tinkering with where money and rights will land post-issuance and in litigation," accusing Congress of refusing to legislate at the USPTO, where it is most needed.  Mr. Feigenbaum challenges Congress to write into the law proper funding for the Patent Office, combined with "clear instructions to dump the 19th century nonsense (quaint though it may be) and operate like a 21st century business."  His suggestions include increasing phone interviews, encouraging interaction with applicants over very short periods of prosecution, and yielding quicker decisions.

James DeGiulio has a doctorate in molecular biology and genetics from Northwestern University and is a graduate of Northwestern University School of Law.  Dr. DeGiulio is a member of MBHB's 2010 associate class and he can be contacted at [email protected].

Comments

[6]

"The source of the backlog, according to the author, is the interaction with patent examiners under the current system, calling the exchange "overly iterative, done on paper, gated by arcane time periods for action and delayed by almost endless deadline extensions.""

I would be proud to call this man brother.

[patent litigation]

Feigenbaum has made an excellent point in that significant, substantive patent reform is direly needed. It's true that Congress appears to be "refusing to legislate at the USPTO." I won't hazard a guess at the reasons, which must certainly be political. Nevertheless, in the face of congressional inaction and apparent inability to pass any kind of patent reform legislation, it seems that the best that we can do is rely on David Kappos and his team at the USPTO to make incremental improvements. The three-tiered system may be inadequate, but at least it's a start.
http://www.washingtontimes.com/news/2010/may/25/patent-reform-misses-the-mark/