The Department of Commerce's United States Patent and Trademark Office (USPTO), in its continuing efforts to make the patent examination process more effective and efficient, is proposing changes that would reduce the amount of rework by the USPTO and reduce the time it takes for the patent review process. Specifically, these initiatives will prioritize the claims reviewed during the examination process and better focus the agency's examination of patent applications by requiring applicants to identify the most important claims to the invention.
The recognized value of patents to innovation has led to enormous increases in the number of patent applications filed each year. Since the USPTO's resources have not increased at the same rate as filings, it has become much more difficult to provide reliable, consistent and prompt patentability decisions. Delay in granting a patent can slow new products coming to market, and issuing patents for inventions that are not novel and non-obvious can impede competition and economic growth. Simply hiring more patent examiners will not slow the growth in the time it takes to get a patent or improve the quality of examination. This will occur only through the participation of applicants in facilitating more effective and efficient patent examination.
"Improving the patent process will take everyone working together-applicants and the USPTO," noted Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. "Better quality applications mean better examination. We need more focus throughout and closure to the examination process."
In FY 2004, almost one-third of the 355,000 new patent applications were directed to inventions that had already been reviewed by the USPTO, but applicants resubmitted them mostly with only limited changes to the claims or, sometimes with the same claims that the USPTO had previously rejected. While some resubmissions are necessary, addressing them detracts from the agency's ability to examine new patent applications. Also, over 40 percent of new applications in FY 2004 had more than 20 claims. Although the initial examination of large numbers of claims may sometimes be necessary in certain complex applications, when these must be filed, applicants should be prepared to assist the agency in ensuring these applications don't absorb a disproportionate amount of the limited time the USPTO has to review applications.
In the past two years the USPTO has instituted a number of measures to improve patent quality and also has implemented new metrics to measure the results. Results indicate that quality is improving. The percentage of patent examiners certified for promotion to full performance level increased from 59 percent in FY 2004 to 70 percent in FY 2005. The number of office actions complying with applicable laws and rules during examination improved to 86.2 percent from 82 percent the previous year. The compliance rate for final allowances improved from 94.8 percent to 96 percent from FY 2004 to FY 2005.
The proposed new rules can be found at http://www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf and http://www.uspto.gov/web/offices/com/sol/notices/71fr61.pdf.