U. S. Patent and Trademark Office
High Impact Agency Commitments
Status Report as of
The Patent and Trademark
Office's vision for the 21st
Century is to lead the world in providing customer-valued intellectual property rights
that spark innovation, create consumer confidence and promote creativity.
The U. S. Patent and Trademark Office
has made significant progress toward accomplishing its commitments as a High
- We have initiated electronic
filing of trademarks, having received almost 40,000 applications via the Internet
- In Patents, our Electronic
Filing System (EFS) will be available to all customers in October 2000. We
have been conducting a pilot since December 1999 and over 110 applications
have been filed via the Internet.
- We have provided Internet
access to major databases: Over 2.7 million pending, registered, abandoned,
expired, and cancelled trademarks dating back to 1870, and the full text and
image of 2.7 million patents dating back to 1976.
- We are pursuing E-government
in a number of ways, such as accepting fee payments, providing patent and
trademark application status information, receiving employment applications,
and receiving and delivering orders for products and services via the Internet.
- At the same time, some
of the commitments made in 1997 have been overtaken by events.
- In Patents, the enactment
of the American Inventors Protection Act of 1999 has caused us to change the
way we monitor timeliness because the legislation provides a guarantee that
would ensure that diligent applicants maximize their patents’ term.
- In Trademarks, applications
are projected to be about 36 percent over the number received in 1999 and
42 percent over the projected receipts in the 2000 President’s budget. This
rate of growth has put a strain on the organization in terms of meeting its
commitments. However, pendency time to first action continues to be well below
the end of 1998 level.
More detailed information
on each of these accomplishments follows.
Process all inventions
in 12 months (to be achieved in 2003).
Results as of
- The Patent goal to process
all inventions in 12 months has been superseded by the American Inventors
Protection Act of 1999, which was enacted into law in November 1999.
The AIPA legislation provides a guarantee that would ensure that diligent
applicants maximize their patents’ term. Failure of the Patent Business
to: (a) issue a first Office action within 14 months filing, (b) respond
to an applicant’s reply to a rejection or to an appeal brief within
4 months, (c) act on an application within 4 months of a decision of
the Board of Patent Appeals and Interferences or a decision of the Federal
courts, (d) issue a patent within 4 months of payment of issue fee,
or (e) issue a patent within 36 months of filing, will result in the
patent term being extended a day of each day of delay.
- At the end of fiscal year
1999, our cycle time averaged 12.9 months, with 62 percent of inventions
processed within 12 months or less.
- Preliminary measurements indicate
that at the end of fiscal year 1999, 83 percent of applications received
a first Office action within 14 months of the filing date, and 89 percent
of patents were granted within 36 months. These are projected to be
75 percent and 90 percent, respectively, by the end of fiscal year 2000.
The decline in the percentage of applications receiving a first Office
action within 14 months of filing reflects a much stronger patent application
filing growth rate than originally planned (12 percent vs. 7 percent),
as well as reduced examiner hiring due to funding restrictions.
- By the end of fiscal year
2000, we project that:
- 99 percent of applications
will receive actions within 4 months of an applicant’s amendment,
- 90 percent of applications
will receive actions within 4 months of a Board decision, and
- 85 percent of applications
will be granted within 4 months of issue fee payment.
Render a trademark first action
in three months (to be achieved in 2000).
Results as of
- The Commissioner for Trademarks
is reporting that applications are projected to be about 36 percent
over the number received in 1999 and 42 percent over the projected receipts
in the 2000 President’s budget. Because of this dramatic increase in
the number of trademark application filings and funding limitations
in fiscal year 2000, pendency to first action will be higher than the
target of 3.0 months.
- Actions taken to address the
dramatic increase in application filings include hiring additional trademark
examining attorneys, and creating measures to focus on examination and
processing time in light of unprecedented growth, and hiring contract
staff to process the backlog of new applications to reduce the time
to mail a filing receipt for paper filed applications.
- Hired 45 examining attorneys
through the end of July. Fifty-five examiners have left for other positions,
a net loss of 10 for the year. A total of 357 examiners are on board
as of August 1, 2000.
- Trademark pendency to first
action is at 5.6 months as of July 2000.
- Pendency to registration/
abandonment is at 17.1 months as of July 2000
Offer electronic filing to our customers (Trademarks in 1999 and Patents in
Results as of
- Trademarks achieved its goal
to offer electronic filing to customers (TEAS) on October 1, 1998.
- TEAS was upgraded in April
1999 to permit automated processing of credit card payments and transfer
of application data.
- In April 2000, seven new forms
were added to the e-TEAS site, permitting customers to file all intent-to-use
and post registration forms electronically. Applications are received
directly in the areas that process the applications, reducing processing
tasks and delivery time.
- Created the first e-commerce
Law Office to receive and process all electronically filed applications.
- Through August 20, 2000, our
customers had filed more than 38,200 applications for registration electronically
this fiscal year, more than the total number received last year.
- To date, 13.5 percent of our
filings have been submitted electronically through e-TEAS, averaging
116 a day, 7 days a week, compared to an average of 747 paper filed
- From April 28 to August 20,
2000 our customers had filed nearly 1,900 intent-to-use applications
and 270 post registration applications.
- With the implementation of
the e-commerce Law Office, filing receipts for electronically filed
applications are sent by e-mail on date of receipt.
- Patents has initiated a patent
application filing pilot via the Internet.
- Work with vendors of commercial
intellectual property portfolio management software packages to incorporate
electronic filing capabilities into their products.
- Since December 1999, the USPTO
has been conducting a pilot program for the electronic filing of patent
applications with customers all across the country. As of August 15,
2000 over 110 patent applications have been filed in the pilot program.
- The Electronic Filing System
(EFS) will be available from the USPTO web site to all customers who
want to use it in late October 2000.The USPTO also plans to mail CD-ROMs
containing the electronic filing software to registered patent attorneys
and agents in November 2000.
- The technical requirements
for electronic filing for patents, trademarks, and assignments are being
made available to commercial vendors through a Request for Agreement.
In this way, commercial software vendors can incorporate intellectual
property authoring software that is compatible with the USPTO technical
process patent applications (in 2003) and trademark applications.
Results as of
- Scan patent applications and
use optical character recognition to capture data from applications.
- Continue development on the
Tools for Electronic Application Management (TEAM) system.
- In October 2003, we will deploy
electronic patent application processing in a Technology Center.
- Full deployment of application
processing to all Technology Centers is scheduled for October 2004.
- Incoming patent applications
are scanned, converted to electronic images, and stored for access by
examiners and technical support staff in pre-examination, certification,
licensing and review, and the Patent Cooperation Treaty Receiving Office
in the Patent Application Capture and Review (PACR) system. PACR also
uses optical character recognition technology to capture bibliographic
data from the scanned image of the applications that are submitted in
a standard format. Customers receive an "electronic post card"
acknowledging receipt of the application via the Internet. The bibliographic
data is automatically entered into the USPTO workflow tracking system.
- Most work on TEAM has been
deferred because of higher priority work to implement the American Inventors
Protection Act and budget reductions. Automated claim tree diagramming
and analysis, a TEAM module, is scheduled for initial rollout in spring
- Replace initial trademark
application data entry system.
- Replace the Trademark Reporting
and Monitoring (TRAM) system, the principal electronic repository of
trademark data and status.
- Scan paper filed trademark
applications and use optical character recognition to capture the data
through the Trademark Image Capture and Retrieval System (TICRS).
- Deploy Trademark Image Capture
and Retrieval System (TICRS) to provide the capabilities necessary to
manage paper filed documents in electronic form by capturing and retrieving
both incoming and outgoing correspondence.
- All trademark data entry throughout
the examination process is done through TRADEUPS.
- The TRAM replacement system
- TRAM++ - has been delayed to incorporate provisions of the Trademark
Law Treaty and to support the "electronic Law Office" concept.
Current plans call for an early summer 2001 deployment.
- The Trademark Image Capture
and Retrieval System (TICRS) has been deployed for processing newly
filed applications for registration. Application text is captured through
optical character recognition technology and automatically loaded into
TRADEUPS, minimizing key data entry for those cases.
- TICRS is available on the
desktop to view electronic images of applications, and is used to generate
copies of the application drawing page for filing in the Trademark Search
Partner with the
World Intellectual Property Organization (WIPO) to achieve electronic filing
of Patent Cooperation Treaty (PCT) applications and to electronically receive
and process PCT applications at the USPTO (in 2000).
Results as of
- Process PCT applications electronically
at the USPTO.
- Develop PCT Operations Workflow
and Electronic Review (POWER) system which, when complete, will utilize
PCT applications filed electronically or converted from paper applications
in the Receiving Office in order to complete an automated formalities
review and electronic processing of the applications.
- The Patent Cooperation Treaty
Operations and Workflow and Electronic Review (POWER) system was deployed
in March 2000. The first phase of POWER supports PCT Receiving Office
functions for international applications.
- Phase II of POWER, planned
for deployment in March 2001, will automate PCT national stage processing.
- Electronic filing of PCT applications
available in fiscal year 2002. Electronic filing of PCT applications
is dependent upon approval of PCT Administrative Instructions that will
provide the legal basis for electronic filing.
to use the Internet to conduct business electronically (ongoing).
Results as of
- Provide patent and trademark
application information through the Internet.
- Enable customers to order
and receive patent and trademark information products over the Internet.
- In fiscal year 2001, expand
the offering of patent information on the Web site to include patents
dating back to 1790.
- PTO provided the capability
to order information products over the Internet in June 1999.
- Provided Internet access to
- Over 2.7 million pending,
registered, abandoned, expired, and cancelled trademarks dating back
to 1870 – 450,000 searches were conducted by the public in June 2000;
- Full text and image of 2.7
million patents dating back to 1976.
- The Patent Application Information
Retrieval (PAIR) system (which makes patent application information
available through the Internet) had received, as of the third quarter
2000, an average of 140,000 queries per month for patent application
- Patents on the web retrieved
over 12.6 million image pages in June 2000.
- As of July 2000, we are delivering
and average of 1,949 documents per month via the Internet.
- As of the third quarter, we
are receiving an average of over 600,000 queries per month for trademark
application and registration status information via the Internet.
the USPTO fee structure to ensure it encourages participation in the patent
and trademark systems and reflects costs.
Results as of
- Assess customer needs with
regard to a fee structure.
- Prepare a report in response
to the mandate in the American Inventors Protection Act of 1999 to study
alternative patent fee structures to determine how best to encourage
maximum participation of the U.S. inventor community in the patent system.
- Conducted customer input sessions
in 1997 – summaries included on the USPTO Web site.
- Continually reviewing and
refining the fee structure: reduction to major patent fee amounts on
November 10, 1998 by approximately six percent; adjustment of patent
and trademark fee schedule in fiscal year 2000 to better reflect costs.
- Currently in the planning
and analysis stage to respond to the AIPA mandate regarding alternative
patent fee structures.
Offer USPTO employees
innovative training programs and work-at-home opportunities.
Results as of
- Prepare USPTO employees to
operate in a new work environment that is knowledge-based and fully
- Provide USPTO employees with
a flexible work environment, such as working at home and flexible work
- Currently five employees
are seeking degrees in Computer Science, Engineering, Life Sciences,
and Physical Sciences which could qualify them for professional positions
within the USPTO. Two participants are expected to complete their degree
programs in December 2000 and be ready to take Patent Examiner Initial
Training (PEIT) in January 2001.
- Twenty-one employees completed
the re-training in mid-March 2000 and are serving as paralegals.
- A Trademark Work At Home pilot
involving 18 trademark-examining attorneys was completed. Currently
34 employees are working at home and this number could be expanded to
60 by the end of the fiscal year.
- USPTO currently is exploring
the feasibility of patent examiners working at home.
For further information about PTO's High
Impact Agency goals contact Frances Michalkewicz, Acting Comptroller and Deputy
Chief Financial Officer (firstname.lastname@example.org)
or Dan Haigler (email@example.com).