Boston Patent Law Association
Joseph Rolla
Deputy Commissioner for Patent Examination Policy
Application Filings and Examiner Production
UPR Applications Filed
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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 04 | FY 05 Target | FY 05 | |
|---|---|---|---|
| UPR 1 FAOM 2 | 288,315 | 297,614 | 297,287 |
| UPR Disposals 3 | 287,188 | 295,456 | 279,345 |
| UPR Production Units 4 | 287,752 | 296,535 | 288,316 |
| PCT Production Units 5 | 16,882 | 22,916 | 15,147 |
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 Center | Average 1 st Action Pendency (months) 1 | Average Total Pendency (months) 2 |
|---|---|---|
| 1600 - Biotechnology and Organic Chemistry | 23.3 | 33.5 |
| 1700 - Chemical and Materials Engineering | 20.6 | 29.8 |
| 2100 - Computer Architecture Software and Information Security | 33.1 | 44.8 |
| 2600 - Communications | 31.2 | 43.9 |
| 2800 - Semiconductor, Electrical, Optical Systems | 15.0 | 25.0 |
| 3600 - Transportation, Construction, Electronic Commerce | 19.8 | 27.5 |
| 3700 - Mechanical Engineering, Manufacturing and Products | 18.6 | 26.6 |
| UPR Total (as of 10/1/2005) | 21.8 | 30.6 |
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 Areas | Pendency 1 (months) | Low Pendency Art Areas | Pendency 1 (months) |
|---|---|---|---|
| 1640 - Immunology, Receptor/ Ligands, Cytokines, Recombinant Hormones, and Molecular Biology | 27.7 | 1620 - Heterocyclic Compounds and Uses | 16.9 |
| 1743 - Analytic Chemistry & Wave Energy | 30.8 | 1752 - Radiation Imagery | 12.1 |
| 2123 - Simulation and Modeling, Emulation of Computer Components | 39.7 | 2125 - Manufacturing Control Systems and Chemical/ Mechanical/Electrical Control | 20.0 |
| 2617 - Interactive Video Distribution | 50.4 | 2651 - Dynamic Information Storage & Retrieval | 16.1 |
| 2836 - Control Circuits | 24.3 | 2833 - Electrical Connectors | 8.8 |
| 3628 - Finance & Banking, Accounting | 52.1 | 3612 - Land Vehicles | 12.0 |
| 3731 - Surgery: Cutting, Clamping, Suturing | 30.9 | 3723 - Tools & Metal Working | 10.9 |
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 Areas | Months of Inventory* | Low Inventory Art Areas | Months of Inventory* |
|---|---|---|---|
| 1614, 1615, and 1617 - Drugs, Bio-affecting and Body Treatment | 38-51 | 1620 - Organic Chemistry | 15 |
| 1753 - Radiation Imagery | 34 | 1734 - Adhesive Bonding and Coating Apparatus | 10 |
| 2127 - Computer Task Management | 46 | 2125 - Manufacturing Control Systems and Chemical/ Mechanical/Electrical Control | 10 |
| 2611 - Interactive Video Distribution | 114 | 2651, 2653 - Information Storage and Retrieval | 12 |
| 2836 - Control Circuits | 22 | 2831 - Electrical Conductors | 8 |
| 3620 - Business Methods | 22-136 | 3651 - Conveying | 12 |
| 3731 and 3737 - Medical Instruments, Diagnostic Equipment | 38-47 | 3742 - Thermal and Combustion Technology | 8 |
*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
| 1600 | 1700 | 2100 | 2600 | 2800 | 3600 | 3700 | Total* | Design | |
|---|---|---|---|---|---|---|---|---|---|
| New Applications 1 9/30/2004 | 55,402 | 63,923 | 71,778 | 97,380 | 77,651 | 56,738 | 65,005 | 508,878 | 18,451 |
| New Applications 1 9/30/2005 | 62,644 | 72,697 | 76,529 | 115,585 | 94,425 | 70,354 | 83,225 | 586,580 | 24,534 |
| Overall Pending Applications 2 9/30/2004 | 95,006 | 105,447 | 102,440 | 138,822 | 137,458 | 101,097 | 108,039 | 809,323 | 27,599 |
| Overall Pending Applications 2 9/30/2005 | 107,647 | 120,767 | 117,728 | 167,721 | 159,687 | 117,045 | 130,168 | 932,300 | 38,104 |
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
| FY 04 | 1600 | 1700 | 2100 | 2600 | 2800 | 3600 | 3700 | Design | FY 05 | FY 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 2002 | FY 2003 | FY 2004 | FY 2005 | |
|---|---|---|---|---|
| TC Summary | % FAOM Rework | % FAOM Rework | % FAOM Rework | % FAOM Rework |
| 1600 | 36.4% | 39.7% | 40.3% | 42.4% |
| 1700 | 25.2% | 26.9% | 27.1% | 28.0% |
| 2100 | 23.9% | 24.0% | 24.6% | 28.2% |
| 2600 | 24.8% | 24.1% | 24.3% | 25.4% |
| 2800 | 19.1% | 22.0% | 24.9% | 24.1% |
| 3600 | 17.7% | 21.2% | 23.1% | 28.5% |
| 3700 | 22.2% | 25.1% | 24.0% | 28.1% |
| UPR | 23.2% | 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
| 1600 | 1700 | 2100 | 2600 | 2800 | 3600 | 3700 | Corps | Design | |
|---|---|---|---|---|---|---|---|---|---|
| FY 04 Hires | 75 | 35 | 115 | 116 | 31 | 26 | 45 | 443 | 15 |
| FY 04 Attritions | 30 | 26 | 58 | 82 | 58 | 43 | 39 | 336 | 4 |
| FY 05 BOY Examiner Staff | 417 | 440 | 563 | 658 | 742 | 422 | 439 | 3681 | 72 |
| FY 05 Hiring (10/1/05) | 101 | 58 | 225 | 169 | 184 | 91 | 131 | 959 | 19 |
| FY 05 Attrits (10/1/05) | 42 | 39 | 93 | 92 | 54 | 55 | 50 | 425 | 10 |
| FY 05 Hiring Goal | 100 | 35 | 200 | 150 | 160 | 90 | 125 | 860 | 20 |
| New Hires as a Percent of Examiner Staffing in the TC | 24% | 13% | 40% | 26% | 25% | 22% | 30% | 26% | 26% |
Stats and Stuff
Distribution of the Number of References Cited in Applications
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Total Continuation Filing Rates
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*Straight Continuations 37 CFR §1.53 (b)(1) - No Divisionals or CIPs - as of 10/23/05
Distribution of Independent Claims at Filing
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Distribution of Total Claims at Filing
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Total Claims at Filing and Issue
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Pendency Projections
Pendency Reduction Action Plan Graph
Production
You Can't Hire Your Way Out of This One
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Markush Practice
- 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