USPTO Officials Address BIO IPCC Meeting

By Kevin E. Noonan --

Commissioner for Patents Robert Stoll and Patent Reform Coordinator Janet Gongola were featured speakers at last week's BIO's Intellectual Property Counsels Committee (BIO IPCC) meeting and both (as expected) focused much of their remarks on the Leahy-Smith America Invents Act.  Insofar as portions of both officials' talks reviewed the provisions of the Act, they will not be discussed here.  However, both speakers' presentations contained important insights into how the Office sees the reforms and is moving to implement them.

Commissioner Stoll's (at right) remarks were tailored to his audience, and he extolled the biotechnology industry for it successes, such as being the leading industry sector for R&D investment (up 6.2% in FY2011) and having more investment than the technology (i.e., computers) or automotive industries, while acknowledging the industry's challenges (such as 8% less venture capital investment).  He also provided USPTO statistics showing that the number of biotechnology-related applications is again rising over the past 2 fiscal years:

The Commissioner also provided some "overall" statistics on Patent Office performance.  These included:

• 535,000 new apps filed in FY2011 (4.9% increase over FY2010)
• Backlog down to 669,625 applications
• 1,217,842 applications in progress
• First Office Action pendency = 28 mos.
• Total pendency = 33.7 mos.
• Allowance rate = 48%
• 93.1% applications filed using EFS (up from 89.5%)

Commissioner Stoll also mentioned several PTO initiatives, including COPA (Clearing out the Oldest Patent Applications), the Patent Examiner Technical Training Program (PETTP, with 14,000 hours of examiner training), and the First Action Interview Program (2310 participants FY2010).  The Office's several Quality metrics merited discussion, with the Commissioner citing the following:

These results suggest that the Kappos Administration is committed (as was the prior Director) to patent quality using some of the same metrics.  However, these and other statistics also suggest that the programs are being implemented more effectively under Director Kappos than they were previously.  This conclusion is supported by the Commissioner's citation to the most recent patent allowance statistics, which have risen to 48%.

The Office has also instituted several programs for expediting patent prosecution, including the "Track 1" or "fast track" exam.  The Commissioner touted the popularity of this program, which had 853 application filings in FY2011 and 241 "so far" in FY2012.  He also mentioned the Patent Prosecution Highway (PPH), which has grown from 2,400 application filings in 2009, to 4,850 in 2010, and to 7,702 filings in 2011.  Of these, 5,675 were "Paris Convention" based applications, and 2,027 were PCT applications, with the Paris Convention-based applications having an 89% allowance rate and the PCT-PPH applications having a 96% allowance rate.

The Commissioner drew the audience's attention to the following as issues and hearings about which the Office is planning rulemaking and Notice in the Federal Register:

• Prioritized Examination (Track 1)
• Changes to the fee schedule
• Changes to Inter Partes Reexamination threshold
• Notice on Public Hearing on Study of International Patent Protection for Small Businesses
• Notice of Public Hearing on Prior User Rights study

The Office is accepting "informal" comments if they are submitted by November 15th; public roundtables and the opportunity for submitting formal comments are planned for January 2012.

Finally, the Commissioner mentioned that the Office plans on hiring about 1,500 new Examiners in FY2012 and to use the 15% surcharge in PTO fees for IT and "process solutions."

Janet Gongola (at right) discussed other aspects of the PTO's plans to implement "patent reform" in the guise of the AIA.  Her talk focused on the "three pillars" of the changes (as implemented by PTO):  speed, clarity and quality.  Under the "speed" category, she discussed "Track 1" prioritized examination, priority examination for "important" technologies, fee setting authority, and the 15% surcharge.  "Quality" for the Office is encompassed by the new provisions that permit third party prior art citation, supplemental examination, inter partes review, post-grant review, and the business method patent transitional program.  Ms. Gongola cited the human organism prohibition, the inventor's oath/declaration, and the first inventor to file provisions as examples of the clarity prong of the AIA's changes in the Office, mentioning that USPTO practice has been compliant with the human organism prohibition, citing "Animals-Patentability, 1077 Official Gazette Pat. Off., 24 (April 21, 1987).

The PTO has made some progress in implementing the AIA:  8 of 20 provisions related to USPTO operations have been implemented, and 10 Notices of Proposed Rulemaking will issue January 2012, they are currently being drafted and vetted in the PTO, and their "clearance" begins November 15, 2011.  These include:

• Inventor's oath and declaration
• Third Party submissions of prior art
• Supplemental examination
• Third Party citation of art in granted patent
• "Umbrella" rule set for contested cases
• Inter partes review
• Post grant review
• Business methods transitional program
• Definition of "technological invention"
• Derivation proceedings

In addition, Ms. Gongola noted that the Prior User Rights and International Patent Protection studies were underway, and that the PTO will seek public comment and will announce hearing dates in January 2012 for the Genetic Testing Study (with the report due June 16, 2012).

Finally, Ms. Gongola noted that the Office has established a computer microsite relating to the AIA at www.uspto.gov/americainventsact.  This site has ways for the public to submit comments, with all comments on the proposed rulemakings due by November 15th.

Comments

[Skeptical]

I remain skeptical whenever I see "statistics: juxtaposed together like:

• Backlog down to 669,625 applications
• 1,217,842 applications in progress

Deck chairs on the Titanic (at full list)were more difficult to move then moving an item from the "backlog" category to the "in progress" category.

Wouldn't a simple measure like "average aged receiveable" be more meaningful?

[Kevin E. Noonan]

Dear Skeptical:

Well, if 535,000 new applications were filed in FY 2011 (provided these are really "new") and there are ~669,000 pending applications filed before FY 2011) then the math makes sense. But I agree that some of this is bookkeeping.

Thanks for the comment.

[staff]

'The Office is accepting "informal" comments'

That's not true. Rather they are acting to limit and filter comments of inventors.

"patent reform"

“This is not a patent reform bill” Senator Maria Cantwell (D-WA) complained, despite other democrats praising the overhaul. “This is a big corporation patent giveaway that tramples on the right of small inventors.”

Senator Cantwell is right. Just because they call it “reform” doesn’t mean it is. The agents of banks, huge multinationals, and China are at it again trying to brain wash and bankrupt America.

They should have called the bill the America STOPS Inventing Act or ASIA, because that’s where it is sending all our jobs.

The patent bill is nothing less than another monumental federal giveaway for banks, huge multinationals, and China and an off shoring job killing nightmare for America. Even the leading patent expert in China has stated the bill will help them steal our inventions. Who are the supporters of this bill working for??

Patent reform is a fraud on America. This bill will not do what they claim it will. What it will do is help large multinational corporations maintain their monopolies by robbing and killing their small entity and startup competitors (so it will do exactly what the large multinationals paid for) and with them the jobs they would have created. The bill will make it harder and more expensive for small firms to get and enforce their patents. Without patents we cant get funded. Yet small entities create the lion's share of new jobs. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale slaughter of US jobs. Those wishing to help fight this bill should contact us as below.

Small entities and inventors have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors. Congress tinkering with patent law while gagging inventors is like a surgeon operating before examining the patient.

Please see http://truereform.piausa.org/default.html for a different/opposing view on patent reform.
http://docs.piausa.org/

[patent litigation]

It's good to know that the Track One program is back in action. Though I wish the patent reform legislation had ended fee diversion, at least the bill is allowing the USPTO a fee hike, which will permit the patent office to implement initiatives (like the Track One program and the Detroit satellite office) that had been back-burnered.
http://www.generalpatent.com/blog/