|Performance and Accountability Report Fiscal Year 2009
Management's Discussion and Analysis
Strategic Goal 1: Optimize Patent Quality and Timeliness
High quality and timely examination of patent applications advances science and technology and creates the certainty innovators need in capital driven markets. The Patent organization is working closely with the public and its stakeholders to find the best ways to ensure that the U.S. patent system continues to promote innovation and U.S. competitiveness in the global economy. The following are the requirements for achieving this goal and our accomplishments in FY 2009.
PROVIDING HIGH QUALITY AND REDUCING BACKLOG
The Patent organization maintained a strong focus on quality and reduced the backlog of existing applications while exceeding all of its goals for the year.
Quality training is the key to quality patent examination, which is a critical part of the USPTO’s strategic plan. The USPTO was proud to announce this year that its Patent Training Academy received a certificate of registration for the International Organization for Standardization (ISO) ISO 9001:2008. The ISO 9001 standard is the most widely recognized and established quality management system framework in the world.
All new patent examiners (588 this year) receive their initial training at the Patent Training Academy, which forms the foundation for their careers as patent examiners. A solid foundation for newly hired patent examiners is critical to their success in later years. The Academy provides a robust training program for newly hired patent examiners. The curriculum not only includes intensive patent examining training in lecture and laboratory format, but also “soft-skill” courses. Upon graduation, patent examiners possess the necessary skills to quickly attain proficiency and technical competency. Receiving the ISO 9001 certification demonstrates the Patent organization’s commitment to providing the best training services for new patent examiners and confirms that the Patent Training Academy has defined and documented standards to ensure that processes are in place to achieve consistent quality products and services.
The successful implementation of the Patent Training Academy has enabled the hiring and training of large numbers of new examiners over the last several years. The growth and increasing experience and productivity of our examination workforce, combined with a slowdown in filings this year, enabled the Patent organization to begin reducing the size of the application backlog and to address growing patent pendency, which ended the year at 25.8 months from filing to first action and 34.6 months until issue or abandonment. However, electronic filings exceeded this year’s goal, reaching 82.5 percent of total filings. The Patent organization also achieved an allowance compliance rate of 96.9 percent and an in-process compliance rate of 93.2 percent. These compliance measures assist with improving quality of products and services by using in-depth reviews of work.
As in past years, the USPTO was heavily involved in shaping IP law and policy through precedential decisions issued by the Agency’s Boards and through domestic litigation. The BPAI issued numerous precedential and informative decisions on both substantive and procedural issues concerning patentability, the examination of patent applications, and the appeals process. The BPAI’s precedential opinions help create consistent authority to be followed in future BPAI decisions and in the Patent examining corps. Its informative decisions also have persuasive value and illustrate procedural and other norms for the benefit of the public, the Bar, and the IP community as a whole. This year’s decisions relate to current issues of concern to the IP community, including obviousness, indefiniteness, patentable subject matter under 35 U.S.C. § 101, secondary considerations, and the requirements of an antedating affidavit. These decisions help to promote definiteness in claiming practice, and help form the basis for determining patentable subject matter, as the Agency implements recent guidance from the U.S. Court of Appeals for the Federal Circuit and U.S. Supreme Court.
The USPTO continues to work with the world’s major intellectual property offices to study, review and implement work-sharing efforts, such as the Patent Prosecution Highway (PPH). The PPH framework leverages fast-track patent examination procedures already available in the USPTO and other participating offices to allow applicants to obtain corresponding patents faster and more efficiently. It also permits each office to utilize the work previously done by the other office and reduce duplication. The results of the PPH programs have been promising, providing:
Similarly, the Trilateral Strategic Working Group, which includes the European Patent Office (EPO) as well as the USPTO and Japan Patent Office (JPO), is implementing related initiatives. In one pilot, when applications are filed in more than one office, the “Office of First Filing” gives the application precedence in prosecution so that the “Office of Second Filing” can advantageously utilize those work results on the corresponding application. A search-sharing pilot has also been initiated, which will leverage the searching expertise of each of the Trilateral Offices by eliminating certain timing issues while at the same time providing both applicants and the Offices with the benefits of the search results.
EXPLORING A RANGE OF OPTIONS TO ADDRESS TIMELINESS CHALLENGE
While continued hiring of patent examiners is key to managing increasing workloads, hiring alone is not the answer to the growth of filings and complexity in the patent system. In fact, the USPTO is exploring a range of innovative concepts to meet the challenges the Agency faces.
The First Action Interview program is a pilot initiative in which the applicant is entitled to a first action interview, upon request, prior to the first office action determination on the merits. An interview under this pilot program advances prosecution of the application because it enhances the interactions between the applicant and the examiner, provides the applicant the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process, and facilitates possible early allowance. Interviews early in an application’s prosecution allow for better understanding of the claimed invention and a speedy resolution of any unresolved issues. This, coupled with reduced applicant response periods, should reduce total pendency for the applications examined under this initiative. Based upon comments and suggestions from the public, including both participants and non-participants, the Patent organization is expanding the First Action Interview pilot to a variety of art areas, and is modifying the program to enhance efficiency and provide more options to participants.
Further, the USPTO conducted a roundtable on February 12, 2009 to gauge patent community and/or the public sector support for the adoption of deferred examination. The Agency webcast the roundtable and invited written comments by any member of the public on the issues raised at the roundtable, or on any issue pertaining to deferred examination. The USPTO extended the comment period until August 31, 2009, so that members of the public could submit additional comments, including replies to the comments on deferred examination that the USPTO had already received and posted on the USPTO Web site.
Another notable program under way is the Accelerated Examination program. New patent applications are normally taken up for examination in the order of their filing date. Under the Accelerated Examination program, the Agency has a procedure for requesting accelerated examination under which an application will be advanced out of turn for examination if the applicant files a petition, with the goal of completing examination within twelve months of the filing date of the application.
Certain requirements have been established for the pilot program. They include that: the application, petition, and required fees must be filed electronically; at the time of filing, the application must be complete and in condition for examination; and the number of claims be limited. Additionally, the applicant must conduct a pre-examination search, provide an accelerated examination support document, and be willing to participate in an interview to discuss the prior art and any potential rejections or objections with the intention of clarifying and possibly resolving all issues with respect to patentability at that time.
The Accelerated Examination program benefits both the Agency and the applicant. In exchange for quick examination, examiners will receive more focused and detailed information about the invention and the closest prior art from applicants. The upfront disclosure by applicants will help examiners to more quickly make the correct decision on whether a claimed invention is patentable. The goal of the Accelerated Examination program is to enable the applicant to receive a quality patent in less time.
In June 2009, the Agency moved into the evaluation phase of the Peer Review Pilot program. Under the original program plan, the pilot was scheduled to end in June 2008, but in the interest of gathering data from a more diverse group of patent applications, the USPTO extended the deadline last year by 12 months and expanded the candidate pool to include applications in the Data Processing: Financial Business Practice, Management, or Cost/Price Determination technology. Under the pilot, the public reviewed on a volunteered basis published patent applications and submitted technical references and comments on the best prior art to consider during the examination. Once all of the pilot’s volunteered applications are examined, the USPTO will publish a comprehensive report outlining the details, results, and next steps.
The pilot was conducted in cooperation with the Peer-to-Patent Project, organized by the New York Law School’s Institute for Information Law and Policy. It is currently showcased on the White House Web site as an example of how federal agencies are using transparent, participatory, and collaborative means to achieve their missions as part of the Administration’s open government initiative.
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