Boston Patent Law Association Slide Set (HTML text version)

Boston Patent Law Association

Joseph Rolla
Deputy Commissioner for Patent Examination Policy

Application Filings and Examiner Production

UPR Applications Filed

[ D ]
FY 05 plan 375,080 (5.5% above FY 04)
FY 05 actual 384,228 (8.1% above FY04)
2.6% over plan

Production

FY 04FY 05 TargetFY 05
UPR 1 FAOM 2288,315297,614297,287
UPR Disposals 3287,188295,456279,345
UPR Production Units 4287,752296,535288,316
PCT Production Units 516,88222,91615,147

1 "UPR" = Utility, Plant, and Reissue Applications.
2 "FAOM" = First Action on the Merits - first action count by an examiner after the filing of an application (does not include restrictions or other miscellaneous actions).
3 "Disposal" = An examiner allowance, abandonment, or disposals following a board decision.
4 "Production Unit" = First action count plus disposal count divided by 2.
5 "PCT" = Patent Cooperation Treaty. PCT applications are processed differently and tracked separately from US National stage applications. For FY 05, 15,147 PU's is 35,389 processed applications.

PENDENCY. . . vs the Backlog

Patent Pendency (as of 1/1/2006)

Technology CenterAverage 1 st Action Pendency (months) 1Average Total Pendency (months) 2
1600 - Biotechnology and Organic Chemistry23.333.5
1700 - Chemical and Materials Engineering20.629.8
2100 - Computer Architecture Software and Information Security33.144.8
2600 - Communications31.243.9
2800 - Semiconductor, Electrical, Optical Systems15.025.0
3600 - Transportation, Construction, Electronic Commerce19.827.5
3700 - Mechanical Engineering, Manufacturing and Products18.626.6
UPR Total (as of 10/1/2005)21.830.6

1 "Average 1st action pendency" is the average age from filing to first action for a newly filed application, completed during October-December 2005.
2 "Average total pendency" is the average age from filing to issue or abandonment of a newly filed application, completed during October-December 2005.

First Action Pendency by Art Areas

High Pendency Art AreasPendency 1 (months)Low Pendency Art AreasPendency 1 (months)
1640 - Immunology, Receptor/ Ligands, Cytokines, Recombinant Hormones, and Molecular Biology27.71620 - Heterocyclic Compounds and Uses16.9
1743 - Analytic Chemistry & Wave Energy30.81752 - Radiation Imagery12.1
2123 - Simulation and Modeling, Emulation of Computer Components39.72125 - Manufacturing Control Systems and Chemical/ Mechanical/Electrical Control20.0
2617 - Interactive Video Distribution50.42651 - Dynamic Information Storage & Retrieval16.1
2836 - Control Circuits24.32833 - Electrical Connectors8.8
3628 - Finance & Banking, Accounting52.13612 - Land Vehicles12.0
3731 - Surgery: Cutting, Clamping, Suturing30.93723 - Tools & Metal Working10.9

1 "Average 1st action pendency" is the average age from filing to first action for a newly filed application, completed during October-December 2005.

Inventory by Art Examples

High Inventory Art AreasMonths of Inventory*Low Inventory Art AreasMonths of Inventory*
1614, 1615, and 1617 - Drugs, Bio-affecting and Body Treatment38-511620 - Organic Chemistry15
1753 - Radiation Imagery341734 - Adhesive Bonding and Coating Apparatus10
2127 - Computer Task Management462125 - Manufacturing Control Systems and Chemical/ Mechanical/Electrical Control10
2611 - Interactive Video Distribution1142651, 2653 - Information Storage and Retrieval12
2836 - Control Circuits222831 - Electrical Conductors8
3620 - Business Methods22-1363651 - Conveying12
3731 and 3737 - Medical Instruments, Diagnostic Equipment38-473742 - Thermal and Combustion Technology8

*The number of months it would take to reach a first action on the merits (e.g., an action addressing patentability issues) on a new application filed in July 2005 at today's production rate. Today's production rate means that there are no changes in production due to hiring, attrition, changes to examination processing or examination efficiencies, and that applications are taken up in the order of filing in the given art unit/area. Of course, USPTO is taking aggressive steps to ensure changes that will significantly lower the inventory rates in high-inventory art areas.

TC Application Inventory

1600170021002600280036003700Total*Design
New Applications 1 9/30/200455,40263,92371,77897,38077,65156,73865,005508,87818,451
New Applications 1 9/30/200562,64472,69776,529115,58594,42570,35483,225586,58024,534
Overall Pending Applications 2 9/30/200495,006105,447102,440138,822137,458101,097108,039809,32327,599
Overall Pending Applications 2 9/30/2005107,647120,767117,728167,721159,687117,045130,168932,30038,104

1 "New Application inventory" is the number of new applications designated or assigned to a technology center awaiting a first action.
2 "Overall Pending Application inventory" is the total number of applications designated or assigned to a technology center in an active status. Includes new applications; rejected awaiting response; amended; under appeal or interference; suspended; reexams and allowed applications awaiting grant publication.
*Total inventory includes applications not assigned to a particular TC, awaiting processing either pre- or post-examination.

Patent Quality (Shared Responsibility)

Quality of Products - FY 05

Fiscal Year 2005
FY 041600170021002600280036003700DesignFY 05FY 05 Target
Patent In-Process Examination Compliance Rate 1 *82.0%81.7%82.9%88.1%84.7%90.9%84.4%86.6%94.3%86.2%84.0%
Patent Allowance Error Rate 2 *5.32%4.88%6.46%3.56%2.25%4.43%4.94%6.43%1.6%4.55%4.0%

*Compliance and error rates as measured by OPQA.
1 Compliance is the percent of office actions reviewed and found to be free of any in-process examination deficiency (an error that has significant adverse impact on patent prosecution).
2 Patent allowance error rate is the percent of allowed applications reviewed having at least one claim which is considered unpatentable on a basis for which a court would hold a patent invalid. "Allowance" occurs before a patent is issued, so these errors are caught before any patent is actually granted.

Re-Work

Technology Centers Rework* Statistics

FY 2002FY 2003FY 2004FY 2005
TC Summary% FAOM Rework% FAOM Rework% FAOM Rework% FAOM Rework
160036.4%39.7%40.3%42.4%
170025.2%26.9%27.1%28.0%
210023.9%24.0%24.6%28.2%
260024.8%24.1%24.3%25.4%
280019.1%22.0%24.9%24.1%
360017.7%21.2%23.1%28.5%
370022.2%25.1%24.0%28.1%
UPR23.2%25.3%26.1%28.3%

* Rework first actions are those actions that are in a Continuing (CONs and CIPs), RCE, CPA or 129(a) applications (excludes Divisionals).

Hiring and Retention

Hires and Attritions

1600170021002600280036003700CorpsDesign
FY 04 Hires753511511631264544315
FY 04 Attritions302658825843393364
FY 05 BOY Examiner Staff417440563658742422439368172
FY 05 Hiring (10/1/05)101582251691849113195919
FY 05 Attrits (10/1/05)4239939254555042510
FY 05 Hiring Goal100352001501609012586020
New Hires as a Percent of Examiner Staffing in the TC24%13%40%26%25%22%30%26%26%

Stats and Stuff

Distribution of the Number of References Cited in Applications

Distribution of the Number of References Cited in Applications Graph [ D ]

Total Continuation Filing Rates

Total Continuation Filing Rates Graph [ D ]
*Straight Continuations 37 CFR §1.53 (b)(1) - No Divisionals or CIPs - as of 10/23/05

Distribution of Independent Claims at Filing

Distribution of Independent Claims at Filing [ D ]

Distribution of Total Claims at Filing

Distribution of Total Claims at Filing [ D ]

Total Claims at Filing and Issue

Total Claims at Filing and Issue Graph [ D ]

Pendency Projections

Pendency Reduction Action Plan Graph

Pendency Reduction Action Plan [ D ] Pendency Projections Graph [ D ] Pendency Reduction Action Plan Graph [ D ] Pendency Reduction Action Plan Graph [ D ] Pendency graph [ D ]

Production
You Can't Hire Your Way Out of This One

Production Graph [ D ]

Markush Practice

  1. A cell adhesion protein of formula (1),
    A-(B)-(C)-(D)n-E
    or a pharmaceutically acceptable derivative thereof , wherein . . .

Accelerated Examination
Would You Like Your Patent In 12 Months ?!?

Accelerated Examination

  • Features of the proposed revision:
  • Move to the head of the line
  • Final Disposition within 12 months
    • Program for expedited Issuance of Patents
  • e-file application and all follow on papers
  • Single Invention
  • Limited Number of Claims
  • Patentability Report
  • Possible Interview before 1 st Action
  • Shortened Statutory Period
  • Enforcement of special status in the Corps

Contact Information

Joseph Rolla

Deputy Commissioner for Patent Examination Policy

e-mail: joseph.rolla@uspto.gov

Phone: 571 272 8800