by Robert J. Sayre
For years, I have been banging the drum to try to get the USPTO to better broadcast news items via email and RSS. In the 21st century, we have come to expect relevant news to be delivered to us via RSS or email rather than having to search/watch for it.
In another step forward, the USPTO has finally made available a series of email channels for free subscription. And at the USPTO Subscription Center, one can now subscribe to USPTO email announcements for any of the following:
- USPTO Press Releases: Announcements of USPTO initiatives, programs and policies—the same announcements that are provided to the media.
- USPTO Director’s Forum Blog: A weekly interactive blog by USPTO Director David Kappos discussing the latest topics of interest to the USPTO and the intellectual property community.
- USPTO Monthly Activity Reports: A monthly at-a-glance summary of new initiatives, events and significant media coverage during the previous month.
- Inventor's Eye: Inventor's Eye is for and about America’s independent and small entity inventor community. Inventor's Eye comes out every other month.
- Patents Alerts: Receive news, featured stories, event announcements, and tips for using Patents EFS-Web, e-Office Action, PDX and other e-commerce initiatives.
- Trademarks Alerts: Receive updates and announcements on upcoming Trademark system changes, events and roundtables, rules changes, and other Trademarks Operation matters.
Of course, if you are not yet subscribed, you may have missed this news, and the USPTO's timing of this announcement for the week of Christmas did not help; so I wanted to spread the word a bit more with this post (sorry I've been so busy the past few months, which has kept me from blogging). And I hope they also soon offer all of these feeds for RSS subscription, though I have seen no word on that yet, except for the feed for the Director's blog.
Also check out the USPTO on Twitter and Facebook. Staying on top of USPTO initiatives and rule changes is one of the best ways to maximize one's prospects for obtaining an allowance. These new tools make it easier than ever to do so.
Here is the announcement regarding these feeds from the Director's blog.
by Robert J. Sayre
A Surprise Encounter with the USPTO Director
This past Friday, the Boston Patent Law Association provided me (above left) with a special treat--an opportunity to join USPTO Director David Kappos (above right) for breakfast across the street and a few doors down from my office. But what really surprised me was when Director Kappos approached a colleague and me from behind to introduce himself and initiate a friendly chat. We had not previously met; Director Kappos was just being himself--remarkably open and cordial.
While President Obama has been criticized for a number of failings in his first term, I try to reserve my judgment to the areas I know well. The functioning of the USPTO is one such arena, and here Obama hit a home run when he appointed David Kappos as USPTO Director. He clearly knows the patent system from all perspectives, and he is an exceptional listener. He asked to hear our thoughts, and he clearly valued our opinions. He seemed more than happy to chat with us for all the time he had available.
Promoting Uniform and Compact Prosecution
One of the first questions I asked Director Kappos, after noting the great variability in examination standards across USPTO art groups, was whether he had ideas for promoting better uniformity and consistency across examiners, particularly in some art groups with very low allowance rates. Without pause or prompting, Director Kappos reflected on the story of the examiner who refused to enter an Amendment due to a mistake with a period at the end of a sentence (I urge you to read the story, originally posted by Greg Aharoninan and commented upon here by a USPTO examiner, if you haven't already). In his own words, Director David Kappos emphasized that this type of examiner behavior is "garbage," and he is determined to try to stamp it out.
Director Kappos noted that changing the culture, aligning priorities and establishing consistency across an institution as big as the USPTO were big challenges. While others might gravitate to a top-down approach, his approach is bottom-up. "You start where the action is, and that's with the examiners." Accordingly, Director Kappos regularly meets with examiners face-to-face and often one-to-one. If my conversation with David Kappos is representative, I am confident that each of these conversations produces a wealth of bi-directional sharing of information and understanding. In addition to establishing these personal connections with examiners, Director Kappos indicated that he is working to provide much more training and guidance to examiners. Likewise, Director Kappos reported that his approach with managers is to focus on how they can best help the examiners and to encourage managers to mentor examiners in achieving "compact prosecution" (i.e., quickly and proactively getting to the heart of issues in examination and thereby streamlining prosecution). Moreover, by further increasing the skills of examiners, he believes they are more likely to stay around and not leave the USPTO.
Director Kappos also noted that the feedback that he is receiving from applicants and their attorneys indicate that these efforts are starting to bear fruit. In particular, he noted that he has already received word of appreciation from many attorneys who have surprisingly received telephone calls from examiners proactively reaching out to try to resolve patentability issues. At one point, Director Kappos specifically commented that "it is our job to help." Words like these are refreshing, as we have not seen that level of top-down commitment to customer service at the USPTO in nearly a decade.
Patent-Term Adjustments under Wyeth
The recent decision from the US Court of Appeals for the Federal Circuit in Wyeth v. Kappos changed the way the USPTO calculates patent term adjustments. Professor Dennis Crouch recently outlined the calculation algorithms and the process for requesting recalculation from the USPTO on his PatentlyO blog, so I will not rehash those topics here.
Director Kappos confirmed that the USPTO is accepting requests for patent-term adjustments under Wyeth; and no fee or petition is required, just a worksheet. You need not even calculate the numbers yourself; just ask the USPTO to do it for you. Interestingly, Director Kappos noted that he considers it to be an "open question" as to whether the USPTO can help patentees who did not file a request for adjustment and are now past the 180-day window post grant for requesting adjustment. He suggested that he thinks the USPTO lacks jurisdiction, though some in the audience offered suggestions for different bases of authority for stretching this limit, and Director Kappos indicated that he would continue to review the issue in view of those suggestions. Nevertheless, in view of the doubts as to whether a remedy can be granted by the USPTO more than 180 days after patent issuance, Kappos emphasized that it is critical that you make some sort of filing to request adjustment before expiration of the 180-day window if you want a review and possible adjustment of the term calculation for recently issued patents.
Director Kappos has indicated that he expects that the USPTO software for calculating patent term adjustments will be reconfigured to accord with the Wyeth decision by March 2, 2010. With delays from the time of issue fee payment to grant, patent term may be correctly calculated by the USPTO at the time of grant if you can wait another couple weeks to pay an issue fee (and you may even be in the clear in terms of a correctly calculated patent term adjustment with an issue fee paid today if the lag from issue-fee payment to patent issuance is more than a month). In the end, you need to talk with your counsel to find out if you should file a request for patent term adjustment on any recently issued / soon issuing patents.
A Five-Year Strategic Plan That Will "Actually Get Executed"
Director Kappos also reported that he is working on a new comprehensive five-year strategic plan for the USPTO. He acknowledged that his plan is not very different from the strategic plan of the previous administration, including objectives, such as decreasing pendency, increasing quality, exercising global IP leadership, and engaging with the applicant community. The difference, Kappos reported, is that he intends for it to be executed, as he intends to produce an extremely detailed slate of initiatives and deliverables, which will be made public.
"Coming from industry, I'm used to strategic plans that actually get executed," said Kappos. With accountability built in, he expects his plan will make some people uncomfortable. Names will go on the chart, pegged to scheduled deliverables; and they'll see yellow and red on the chart when dates are not met.
Increasing the US Patent Allowance Rate
I reported previously on this blog about Director Kappos's efforts to change the "rejection mentality" at the USPTO, a mentality that produced the plunging patent allowance rate at the USPTO. Further acknowledging the perverse incentives for examiners under the previous administration, Kappos noted that examination results were naturally skewed under a system in which if you (as an examiner) allow applications "bad things happen"; while if you reject, "nothing bad happens." The early results from Kappos's initiatives, which will include changes to the examiner "count system," already show an increase of multiple percentage points in the US patent allowance rate.
Director Kappos further reported that the increase has been reported to be as high as 5.4%, though it may be closer to 3% if you include Requests for Continued Examination (RCE's). My understanding is that RCE's have previously been counted as non-allowances in calculations of USPTO allowance rates, and I include them when I calculate my own track record. Consequently, I believe that the ~3% increase in allowances is the proper metric. Moreover, Kappos suggested that he believes that the allowance rate "will probably go up more with the new count system," as examiners are incentivized to actively engage with applicants. For the long term, Kappos stated, "I would like to see the allowance rate go up and to see quality go up at the same time."
Director Kappos reported that the USPTO's Pre-First-Action Interview Pilot Program has thus far worked "extremely well." Kappos further stated that "first-action allowance is up something like 600%" under this pilot program. Accordingly, you can use these pre-first-action interviews to obtain patents much more quickly and efficiently. The Pilot Program is still only offered in a very limited number of art units at the USPTO; however, Kappos's pride over the success of the program suggests that it may eventually become available to all applicants (if and when that happens, I will certainly report it on this blog).
Director Kappos also wants examiners to reach out to applicants at all times in the process, including before first actions, after "final" actions, after notices of appeal, etc. Further regarding interviews, Director Kappos directed us to a resource of which I was not previously aware: the USPTO Examiner Interview Training Course Materials, which are available on the USPTO website and which I believe will be likewise quite helpful to prosecuting attorneys. Director Kappos indicated that he intends to post all examiner training materials to the public. Bravo! Part of the USPTO's mission is to disseminate knowledge; so it is great to see Director Kappos finally advancing this goal (unfortunately, I forgot to ask him why the USPTO still does not provide downloadable PDF copies of US patents, though he answered that question indirectly when he discussed not being able to upgrade the USPTO's IT infrastructure due to insufficient funding from Congress, as is further discussed below).
Green Technology Accelerated Examination
I posted earlier on the USPTO's accelerated patent examination program for "green" technologies, so I will not rehash the details here. Though Director Kappos indicated that about 600 requests for participation have thus far been filed against a cap of 3,000. Director Kappos also explained that the cap was imposed because the examiners' union was concerned that examiners might be overloaded if there was a flood of participants.
I asked Director Kappos whether he expected the program to be renewed so that applicants who file now could be eligible to participate. Director Kappos noted that the reason why the program was targeted only to already-filed applications was that he was concerned about changing applicant behavior, which I interpret to mean that he suspected that applicants may shift the target or focus of patent applications toward green applications to bolster their likelihood of being accepted into the program. That suspicion seems not unreasonable given the comparative risks and burden of the standard accelerated examination program requiring an Examination Support Document. Nevertheless, Director Kappos indicated that if they reach the 3,000-participant cap, then a forward extension of the program (accepting later filed applications) is certainly possible.
"Bump and Dump"
Commenting on the USPTO's "Bump and Dump" program, officially cited under the less-catchy moniker, "Patent Application Backlog Reduction Stimulus Plan," Director Kappos indicated that he was positively surprised that about "fifty-ish" small-entity applicants have thus far abandoned a patent application to subject another of their applications to accelerated examination under "bump and dump." This comment suggests that the USPTO never expected this program to have a particularly significant impact. And if you search "bump and dump," you will find some off-color definitions (I am not sure who first associated it with the USPTO's program), though it appears the name has firmly attached to this USPTO initiative both outside and inside the USPTO.
Ideas for Delayed Examination and Different Examination Tracks
Director Kappos pointed out that a delayed examination framework (as is available, for example, in Japan and Canada) would present an effective means of weeding out patent applications that are no longer of interest when examination begins without wasting examination resources. Currently, a US applicant pays filing, search and examination fess up front at or near the time the application is filed, so there typically is little motivation for an applicant to proactively abandon an application. If the applicant can wait until a later date (two years perhaps?) to pay the search and examination fee, Director Kappos indicated that 10-20% of filed patent applications would go abandoned on account of applicants' failure to later pay those fees. Director Kappos noted, however, that a delayed examination procedure was no more than an idea at this point and is not (yet) being pursued by way of USPTO rule-making.
Additionally, Director Kappos pitched the idea of establishing a three-track examination structure, wherein "queue one" would be for applicants who want a patent within a year and who are willing to pay higher fees; "queue three" would be super slow--like the PCT he said (though this comment confused me as a PCT Search Report is at least supposed to be issued 18 months after the earliest filing date, which is often faster than the USPTO issues a first action on US applications); finally, applications in the middle track would be processed just like the bulk of applications now are processed. Again, Director Kappos indicated that this framework was only an idea at this stage, though he commented that it "would not be that hard to do."
Patent Prosecution Highway and Cooperation Between Patent Offices
The Patent Prosecution Highway (PPH) refers to a series of agreements between the USPTO and foreign patent offices for fast-track examination (in my limited experience, the PPH track has not been particularly fast and one can obtain most of the same benefits via the filing of Information Disclosure Statements citing foreign prosecution). Director Kappos indicated that the average number of Office Actions for an application in the PPH is 1.7, while the average among all applications is 2.7 office actions, though I think it is reasonable to expect such a difference based simply on the fact that another examiner already held the claims to be allowable (i.e., the claims are more likely to be objectively patentable merely by virtue of the allowance of a foreign counterpart application).
Director Kappos stated that he wanted to "back up" from the PPH focus on allowances in foreign counterpart applications. Director Kappos indicated that he is not as interested in allowances as he is in the initial search report and office action. As is to be expected, the USPTO will conduct its own examination, though US examiners can surely benefit in many cases from seeing a foreign examiner's search report and interpretations. I agree with this assessment (analogously, if a new client transfers in a case to me for which the previous attorney provided at least an initial draft of the application, I certainly want to see what ideas the other attorney had for claims and leverage as much of his/her work as I can use to fit within my own framework). That approach just makes sense from an efficiency perspective.
To facilitate taking advantage of the efficiencies of leveraging the work of foreign examiners on counterpart applications, Director Kappos signaled an intent to build the familiarity and trust between US examiners and European and Japanese examiners that will facilitate information sharing between examiners in the different offices and the resulting examination efficiencies and potential quality enhancements.
Patent Reform Legislation
Commenting on Senate Bill 515, the Patent Reform Act of 2009, Director Kappos indicated that, in his opinion, the bill--while not a panacea and not his favorite piece of legislation--is good legislation, on balance. Kappos indicated that he believes it resolves some major harmonization issues, including first-to-file. He also likes the "rationalized" post-grant reexamination provisions, and he thinks the damages language is the best compromise we are going to get.
From the audience, however, David Boundy pointed out that the redefinitions of prior art under the amendments to 35 U.S.C. 102 to accord with a first-to-file priority framework would significantly weaken existing prior-art grace periods with respect to pre-filing disclosures made by anyone other than the inventors. Director Kappos indicated that he had not heard this concern before but indicated that he would reread the text from this perspective.
The Bad News: USPTO Funding
The "really bad news" according to Kappos, however, is the USPTO's dire funding situation. With congressional appropriations capped to match last year's reduced revenues, the USPTO now faces expropriation of excess applicant fees and an inability to use those fees to pay for much-needed upgrades in IT infrastructure and examiner hiring. Due to this lack of funding, Kappos is now scrambling to put the brakes on new USPTO programs.
Kappos indicated that the appropriators and the administration "get" that this is a serious problem and want to help, though securing a funding increase through the legislative molasses is not easy. Meanwhile, the USPTO is losing 35 people per month and cannot replace them. As a consequence, US patent pendency is going to increase again this year for those who do not /cannot take advantage of the various accelerated examination platforms.
Finally, I encourage any of you with an interest in US patent practice (and surely you have a strong interest if you read this far) to take advantage of any opportunity you may find to meet or listen to David Kappos. As long as this post was, I only captured a smattering of the wealth of ideas and insights he so graciously shared. My own patent practice will certainly be smarter for having benefited from those insights.
by Robert J. Sayre
Under a new United States Patent and Trademark Office pilot accelerated examination program, "green" patents can now receive a boost in examination at the United States Patent and Trademark Office. According to the USPTO, green patent applications that are accepted into the program and that are ultimately allowed will be issued by the USPTO about a year faster than without the program. The average pendency in green technology areas is approximately 30 months to a first action and 40 months to a final decision.
"By ensuring that many new products will receive patent protection more quickly, we can encourage our brightest innovators to invest needed resources in developing new technologies and help bring those technologies to market more quickly," explained U.S. Commerce Secretary Gary Locke. Adding to Locke's comments, USPTO Director David Kappos further explained why this program is needed. "Every day an important green tech innovation is hindered from coming to market is another day we harm our planet and another day lost in creating green businesses and green jobs."
Only the first 3,000 petitions will be accepted into the pilot program (and, unless extended, the program will expire no later than December 7, 2010). Director Kappos estimates that about 25,000 applications are eligible, so act fast. Unlike the USPTO's previously existing accelerated examination program, this pilot program for green technologies does not require a dreaded "examination support document" and no separate petition fee is required.
Applications accepted into the accelerated pilot program will be placed on an examiner's accelerated docket (i.e., the examiner's "special docket") prior to issuance of a first Office Action, which should shorten the delay between filing and substantive examination, and the application will have special (accelerated) status on Appeal, if Appeal is needed.
- Your application must be a US non-reissue, non-provisional utility patent application filed before December 8, 2009, or the national stage of a PCT application that enters the US before that date.
- Your petition must be filed before the examiner issues a first Office Action.
- Your petition must be among the first 3,000 filed at the United States Patent and Trademark Office.
- Your application must include no more than three independent claims, 20 claims total and no claims in multiple-independent format. You can amend your claims via preliminary amendment to meet these requirements.
- Your application must be directed to a single invention that falls within one of the categories listed below, and your application must be classified in one of the 79 green technology classifications listed on pages 3 and 4 the Federal Register Notice.
- Inventions that materially enhance the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements; or
- Inventions that materially contribute to (a) the discovery or development of renewable energy resources [including hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources]; (b) the more efficient utilization and conservation of energy resources (in combustion systems, industrial equipment, and household appliances); or (c) greenhouse gas emission reduction [including, but not limited to, inventions that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies)].
Additionally, in your petition, you must pledge that, if the USPTO determines that the claims are directed to multiple inventions (e.g., in a restriction requirement), you will agree to make an election without traverse in a telephonic interview. Your petition must also be filed via the United States Patent and Trademark Office's Electronic Filing System, and the petition to make special must be accompanied by a request for early publication (and payment of the $300 publication fee). Further still, If the application does not clearly disclose that the claimed invention falls within one of the above green categories, the petition must be accompanied by a statement signed by the applicant, assignee, or a patent attorney/agent explaining how the materiality standard is met.
The petition form provided by the United States Patent and Trademark Office is a simple one-page document.
Beyond the advantage of potentially obtaining an issued patent much faster, I see at least a couple other less obvious advantage of taking advantage of this program. If your application is accepted into this green technology accelerated examination program, it (a) tells the examiner that you are serious about getting your green technology on the market to help save our environment and that you are anxious to obtain your patent, which can help establish a favorable rapport and (b) provides an imprimatur from the USPTO that your invention is a green technology worthy of accelerated attention to serve the nation's key goals in protecting our environment, which may impress judges, juries, investors, licensees, customers, etc.
Robert J. Sayre of Modern Times Legal has a keen interest in sustainability and green technologies and has experience in many of these fields. Joining the USPTO in promoting green technologies, Modern Times is offering a corollary special deal for green patent applications: Bob will gladly offer a free consultation for existing and potential new clients alike to help you evaluate whether to file a Petition for Accelerated Examination. Contact Bob now to find out if your patent application may be eligible.
Above author's photo shows clean air and water in Finse, Norway (2008), accessible via train from Oslo to Bergen.
by Robert J. Sayre
In the United States, utility patent applications can be filed as either a "provsional" or a "non-provisional" application. Non-provisional patent applications must meet many formal requirements and are typically subject to a lengthy examination process. In contrast, provisional patent applications are subject to few formal requirements and are never examined. Provisional patent applications also remain pending for only one year; within that one year, a non-provisional patent application must be filed to maintain the benefit of the original filing date of the provisional application.
Provisional patent applications can typically be filed more quickly and less expensively than can a non-provisional application. If, however, you are certain that you will eventually proceed with a non-provisional application, filing a provisional and then a non-provisional is typically more expensive than just beginning with a non-provisional filing. Accordingly, provisional filings may make sense if you are unsure whether you will ultimately proceed with a non-provisional filing and where you wish to minimize your upfront investment.
Beware, however, of any attorney or agent who offers to file a dirt-cheap provisional patent application for you (for example, a provisional application for less than one thousand dollars). Though provisonal applications face few formal requirements, they only provide value as a priority filing if they satisfy the rigorous patentability standards of written description, enablement, best mode, etc. Explaining the details of these requirements would require too much space for this post, though, in short, the invention needs to be described in full and exacting detail. If your description and drawings are in any way incomplete (or even if you describe the invention in the wrong way), the provisional filing may have little or no value and your invention will not be meaningfully protected.
While any registered attorney or agent can file a cheap provisional and there are numerous scams that offer to help you file your own provisional application for a modest fee (see, for example, the complaints on the "scam prevention" page on the USPTO website), you might compare it with surgery. Anyone can cut you open and remove things from inside you, but would you trust anyone to do so other than a highly qualified surgeon? And for that professional service, you will likely need to go to a hospital and pay market rates. Moreover, in most cases, you would not try it yourself unless you completed medical school. Patent law is every bit as complex as modern medicine; using one errant word can be every bit as devastating in terms of forfeiting your invention as might some hack nicking your carotid artery forfeit your life; in either case, it may well be game over.
Those warnings aside, allow me to address some of the other benefits of filing a United States provisional patent application.
First, filing a provisional patent application allows you to market your invention (which is described in the provisional patent application) as "patent pending." This claim can serves as a powerful marketing tool, and seeing "patent pending" on your product will often give pause to competitors who may want to steal your idea. Because you have locked down a filing date with your provisional filing, you may also then be able to begin marketing your invention (assuming it is fully described in your provisional filing) with reduced risk of anyone stealing your idea.
Second, if you are looking for funding or investment for your technology, potential investors will generally love to see that you are pursuing patent protection; and often a provisional filing will be enough to satisfy them that you have taken adequate initial steps to protect your technology.
Third, provisional filings allow for up to an extra year of US patent term. An issued US utility patent is valid for 20 years from the earliest non-provisional filing date. Consequently, you can file a provisional patent application today and then wait one year before filing your non-provisional patent application. Your priority date will be today (if you fully describe your invention in the provisonal), though the clock on your 20-year patent term will not start ticking until November 2010. The "priority date" is important because it determines what can be asserted as "prior art" against your invention.
Fourth, provisionals can be very valuable when you are still engaged in R&D and your technology is still evolving. You can have a provisional application filed today to cover the core idea; and then, assuming you generate new ideas and improvements over the next year, those new ideas can be added into your subsequent non-provisional filing. In the non-provisional filing, your broadest claims my be supported by your provisional patent application, and thereby be entitled to the priority date of the provisional filing, while your non-provisional application can also include more specific claims directed to your later improvements that may not have the benefit of the original provisional filing date, though which may still be patentable.
Fifth, even with the best of intentions, emergencies happen where a disclosure of an invention may suddenly become imminent. A provisional filing can be made (often same-day) covering as much as possible within the time avialable. While there often will be risks that the disclosure in the provisional application will not be sufficient, at least you can preserve a chance to obtain patent protection; and a skilled patent attorney may be able to work wonders even with just a few hours.
Sixth, if you do not follow up with the filing of a non-provisional patent application, your provisional patent application will go abandoned and can remain secret forever. Consequently, you may be able to allow your provisional patent application to lapse and then rely on trade secrecy with no one ever learning of the details of your invention.
Any legal advice as to whether you should file a provisional patent application obviously is very fact- and context-specific; and you should talk with a qualified patent attorney to assess the right choice for your situation. Additionally, this post really only scratches the surface regarding provisional patent application, though I hope it offers some useful information.
Relatedly, if you wish to see typical costs for provisional and non-provisional patent applications and the various stages of patent examination and patent maintenance, you are welcome to obtain my free report on typical patent costs.
by Robert J. Sayre
Good news: the blog of USPTO Director David Kappos is now public. I had previously referenced his blog, when access was limited to United States Patent and Trademark Office employees, in earlier posts about changes at the USPTO.
Though Director Kappos's first public post does not include any profound new announcements, I expect that, going forward, he will use it to inform us of new USPTO initiatives and the rationale behind his policies. Doing so will definitely signal a change of operation and communication from USPTO management, and I expect it will help to improve relations both between the USPTO and applicants and between the USPTO and the broader public. Director Kappos's blog allows for comments and even includes an RSS feed. Although RSS permeates nearly all corners of the internet, the USPTO had thus far hid from it.
Accordingly, Director Kappos's public blogging and use of syndication for communication are additional positive signs of openness and transparency. Check it out and stay tuned.
Stay tuned as well to see how the USPTO announcement that it will provide its data to Google for dissemination will play out. I enjoy using a wide variety of Google services and am generally quite pleased with the quality, so I am optimistic that Google can help make patent data more accessible, particularly since the USPTO until now has refused to even provide PDF copies of US patents via its website, which has been contrary to its mission to disseminate information.
Hat tip to Professor Dennis Crouch for the announcement regarding the public accessibility of Director Kappos's blog.
by Robert J. Sayre
Just_n_Examiner from the USPTO is doing a fine job keeping us posted with inside perspectives on changes at the USPTO under new Director David Kappos (left). In yesterday's post, the Examiner relayed some of the latest posts from Director Kappos's internal blog at the USPTO.
The following two reported points from Director Kappos will be of particular interest to patent applicants.
Reversing the Rejection Mentality
First, Director Kappos offers more insight as to how he will change the "rejection mentality" at the USPTO, which has led to the dramatic plunge in US patent allowance rates over the past few years. When listing important benefits of changes that have not yet received much notice, Kappos reportedly cited:
"Reducing examiner reluctance to allow applications. Due to low allowance rates in certain areas, Primary Examiners have less margin for error since their PAP [Performance Appraisal Plan] has an error rate standard. Since the error rate is based on the number of applications allowed, if very few applications are allowed only one error may take the employee out of the 'Fully Successful' rating level. The change provides that an examiner won't be penalized performance-wise based upon a single clear error in Patentability Determination."
In other words, US Examiners no longer need worry about receiving a poor performance appraisal on the basis of allowing a single patent application with which a reviewer may disagree. My prediction: this small change has the potential to trigger a significant shift away from the frequent reluctance of some US examiners to allow patents. I will aim to continue posting charts of the US allowance rate, such as the one linked to above; and I hereby forecast that the curve will soon change direction and shift back upward.
Promoting Access to Examination Results from Foreign Counterparts
Second, Director Kappos elaborated on the administration's opposition to the "sovereign function" language in the current patent reform legislation, which would would block the US from participating in worksharing initiatives with overseas patent offices. Director Kappos reportedly indicated:
"[W]orksharing should not be confused with taking examination responsibility and decision-making away from US examiners. Worksharing does not take examination responsibility or decision-making away from US examiners; it provides US examiners with another tool, like all the other tools we use, to enable our examiners to do the best possible job in examining applications having foreign counterparts."
And I think that Just_n_Examiner gets it exactly right when he/she says:
"The thing that has struck me about the whole Patent Prosecution Highway from the start is the fact that all this seems to do is to facilitate what you'd think examiners would be doing anyway.
If you're examining an application, your search would likely uncover any related applications, whether they are US or foreign applications (at least the major Patent Offices), and once found, it certainly makes sense that you'd want to check out the art that was cited by the examiner during prosecution in those foreign patent offices."
In short, expect the USPTO take more initiative in leveraging the search and examination results from foreign counterpart applications. I have found that leveraging a strategy of directing the examiner's attention to favorable rulings as to the patentability of related foreign applications examined by the European Patent Office, by the Korean IP Office, by the UK Patent Office, etc., to be very successful in securing allowances of US patent applications. As the US institutionalizes these practices, I expect there will be even more opportunities to benefit in the way of obtaining expedited allowances of claims that meet the basic requirements of patentability; and US patent examination, overall, should be executed more efficiently and expeditiously, which may help to reduce the increasing backlog of US patent applications still awaiting examination.
As always, I invite you to contact me to discuss how these and other strategies may help to secure patents for your institution.
by Robert J. Sayre
Earlier this week, USPTO Director David Kappos unveiled a proposed new count system for measuring examiner production. This news may sound like esoteric trivia if you are not a patent practitioner; though, in fact, it represents a very important development for the improvement and healthy functioning of the US patent system.
Allow me to first step back and provide some context. First-time patent applicants are often surprised to when I tell them that we can expect a likely rejection of their patent application when the examiner issues a first Office Action. The reasons for this phenomenon are addressed below.
First, examiners at the United States Patent and Trademark Office are given very little time to issue Actions on what are often very complex and detailed patent applications. As technology grows more complex, so do many patent applications; and, therefore, more time should be allotted for examination.
Additionally, Examiner production at the USPTO is measured in "counts." Examiners have historically received one count for a first Action on the merits and one count for an allowance or abandonment. Accordingly, if the examiner issues a first-Action allowance, the examiner receives one count. If, however, the examiner issues a first-Action rejection, allows the applicant to respond, and then allows the application, the examiner receives two counts.
Please do not misinterpret me, however. I am not suggesting that examiners are by-and-large unscrupulous or lack integrity--not at all. I do occasionally receive first-Action allowances even where issuing that allowance may run contrary to the examiner's self interest in terms of receiving counts, and I find that most of the examiners at the USPTO with whom I interact take their jobs very seriously and have high integrity. Nevertheless, I think most psychologists/sociologists will tell you that this incentive system is likely to skew results, at least in close cases, no matter how fair-minded the participants may attempt to be.
Director Kappos earlier pledged to dramatically change the count system to provide better, fairer incentives for expeditiously reaching determinations of patentability. Kappos previously referred to "disfunctional behavior" in the examination of US patent applications, and the USPTO presentation introducing this proposed new count system cites as an expected result of these changes a reduction of "examiner reluctance to allow patent applications" (slide 3 of the above-linked presentation). Another expected benefit of these changes is to "increase examiner morale leading to reduced attrition" (slide 5--high examiner turnover is currently one of the biggest problems at the USPTO).
Although this initial proposal may ultimately be subject to revision, I give Kappos and his task force high marks in crafting a proposal that appears likely to noticeably advance the goals of promoting efficiency and fairness in patent examination; and I applaud their transparency and openness in presenting this proposal to the public, which is a marked change from the practices of the previous administration.
Important elements of the proposed new count system include the following (with my comments in parentheses):
- allotting the examiner more time to issue a First Action on the Merits (if you value efficient, cost-effective patent prosecution, moving toward a more in-depth, carefully considered evaluation of patentability issues right from the start is welcome news),
- crediting examiners with time to conduct examiner-initiated interviews (I have already posted my views as to how interviews with patent examiners can dramatically advance the resolution of issues during examination; if examiners are likewise encouraged to reach out to attorneys when they confront an issue that may more readily be resolved via an interview, these advantages and efficiencies can be further increased and expanded beyond situations where the attorney initiates the interview), and
- reducing the credit that examiners receive for later Actions in drawn-out examinations. including reduced credit for the filing of Requests for Continued Examination (again good news for applicants wishing for a more expeditious resolution of patentability issues).
The USPTO presentation (slide 6) also includes a couple of tables (reproduced below) comparing the current count system with the proposed new examiner count system:
Current count system:
Proposed new count system:
The columns in the above tables represent (a) First Action on the Merits (FAOM), (b) Final Action, and (c) Allowance/Abandonment of the application for an original application and for further examination after filing a first and second Request for Continued Examination (RCE).
Further still, the presentation (slide 19) suggests that examiners would also face reduced risks of penalty (oral warnings) if an indication of patentability is found to be in error. This proposal also is good news for applicants, as a fear of reprimand on behalf of examiners if a questionable case is issued is believed to be a cause for the drastic drop in the patent allowance rate at the USPTO.
I expect these proposals will be subject to at least minor tweaks as interested stakeholders (including the examining corps) offer their input. Meanwhile, recognizing that a lot of the traffic to this blog comes from the USPTO (though I never know anything more specific than the source domain--I do not know which examiners may visit this site), I welcome any comments from examiners as to how they view this proposed new count system.
As always, I would be delighted if you would subscribe to the RSS feed (top of page) or email list (right column) for this blog to receive future posts (there is much more to come); the bigger my audience, the more inspired I am to write. Thanks for visiting.
by Robert J. Sayre
Several recent posts on this patent blog have explored coming changes to the USPTO. This post, in part, looks back. The Patent Claims and Continuation Rules promulgated by the previous administration (limiting an applicant's right to file multiple patent applications with an adequate number of claims) was one of the most contentious USPTO initiatives under past-Director Jon Dudas. It's retrospective nature, in particular, sent many applicants into a frenzy to try to preserve as much of their then-endangered intellectual property rights as possible.
Yesterday (Friday, September 25, 2009), I had a chance to hear from and question past-Director Dudas at a forum at Suffolk Law School in Boston. To his credit, Jon Dudas made himself available and invited challenging and critical questions. Not wanting to miss the opportunity, I took him up on that invitation.
USPTO Claims and Continuations Rules Package:
But first, one of Dudas's most interesting comments pertained to the above-mentioned Continuation Rules. As you may recall, those Rules were challenged before implementation and, in a ruling that had the patent bar collectively on the edge of its seat, Federal District Court Judge James Cacheris ruled that the USPTO's proposed limitations to the number of continuation applications and claims per patent were improper extensions of PTO authority and, accordingly, struck down the Rules.
As the celebration ebbed, a three-judge panel of the Court of Appeals for the Federal Circuit surprisingly overtured the District Court Decision on March 20, 2009, holding only a limited portion of the Rules relating to continuation applications to be contrary to the Patent Act. Adding to the tumult, the full bench at the Court of Appeals for the Federal Circuit then vacated this panel decision and agreed to rehear the case en banc (i.e., with all 16 judges hearing the case).
Meanwhile, of course, the Bush administration was replaced by the Obama administration, and Director Dudas resigned on January 18, 2009; so implementation of the Rules package, if it ultimately survives the appeal process, would be left to the next Director. Current-Director David Kappos was not sworn in until this past month; so in a sense, the Continuation Rules ship has been sailing through the appeal process without a captain since the beginning of the year. My understanding is that new-Director Kappos is now unable to comment on the continuation rules given that he is now a party to the litigation, though I understand that he was against the rules when he previously served as counsel to IBM.
Accordingly, the fate of the Continuation Rules package has remained somewhat uncertain. Though, I was surprised to hear past-Director Dudas now concede on Friday, in his words, "I don't think there's a way in the world that the Rules package will go forward." Dudas further explained that he believed that if a new USPTO Director had been confirmed before the Court of Appeals for the Federal Circuit granted review, the Rules package would have been withdrawn. Past-Director Dudas would seem to be in a position to know, so it appears safe to say that even if the full panel at the Federal Circuit approves some or all of the rules, the claims-continuation rule package will never be implemented, at least not in its current form.
Drop in US Patent Allowance Rate:
Getting back to my questioning of past-Director Dudas, I asked him for his view as to what policies and initiatives led to the drastic plunge in patent allowance rates at the USPTO under his leadership. Dudas surprised me by telling me that he was surprised at the degree to which the allowance rate dropped. As to why the rate dropped so far and so fast, Dudas first indicated that he believed that the "second pair of eyes" review procedure of examiner Actions was implemented in overly onerous way at the USPTO.
Dudas also noted (correctly, I believe) that the focus on error rate (which seems primarily aimed toward ensuring that no questionable patents are issued) may have drove down allowance rates, just as the "quality is customer [applicant] satisfaction" mindset of the USPTO under the leadership of Commissioner Bruce Lehman in the mid-1990's corresponded with a rise in allowance rates. Dudas further indicated that he thought the Supreme Court's KSR decision, which raised the bar for establishing non-obviousness of an invention, drove the allowance rate down even further.
When Dudas was introduced, emphasis was placed on his achievements promoting intellectual property protection overseas; and Dudas's speech focused primarily on congressional patent reform efforts (Dudas was Senate Counsel before he was not nominated by Bush to lead the USPTO); and he seemed to have a stronger interest in the actions of the legislative branch (i.e., House and Senate) than on the executive branch (which is where the USPTO resides). Combined with his comments on how the USPTO functioned (including his indications of surprise), it appeared to me that Dudas may not have been primarily focused on directing the fine points of policy and the particulars of USPTO examination practice when he was Director. Note, however, that this was the first time that I had met Dudas, so my observation basis is limited.
If not Dudas, who drove these policies? I am not sure. Regardless, new-Director Kappos has indicated that he intends to focus more on US patent examination policy and less on foreign initiatives, except to the extent that foreign cooperation can help to make US patent examination more efficient.
As for what happens next, past-Director Dudas indicated that he expected that, within the next year, the growing list of bilateral patent-prosecution-highway agreements between the US and foreign countries (aimed to streamline prosecution based on allowance of a corresponding application in another country) would grow into a common multi-lateral agreement among patenting bodies worldwide. He also expected fee increases for applicants and more time for examiners to conduct their examinations.
by Robert J. Sayre
In part I of this series, I included a clip of USPTO Director David Kappos (right) pledging to "completely remake the count system" for measuring examiner production to reduce "disfunctional behavior" in the prosecution and examination of US patent applications.
On his/her blog, just_n_examiner yesterday posted an email from USPTO management outlining its process for establishing a new count system. From the email:
On Tuesday, August 25, a task force comprised of four members from the Patent Office Professional Association (POPA) and four from Patents Management met to begin work on re-engineering the patent examiner count system. The day-long session was kicked off by USPTO Director David Kappos who emphasized the importance of their work, stating, “Creating an examiner count system which gives examiners the time they need to do their job properly and which incentivizes compact prosecution, including the use of interviews, is currently job number one for the agency.” Director Kappos committed his support and involvement to the work of the task force and will be holding regular check point meetings with them.
The task force, led by Deputy Commissioner for Patent Operations Peggy Focarino and POPA President Robert Budens, has been given a deadline of October 1 to recommend a solution which moves the Agency significantly forward towards a new examiner count system which is properly aligned to achieve both efficient and high-quality examination. (Emphasis added.)
That's right, within one month, we should have a better sense of how US patent prosecution is about to change. I believe that Kappos's focus on the use of examiner interviews is well-placed and can indeed serve as an important tool in expediting patent examination and improving examination quality. At present, I find there is significant variability among US examiners in their attitude toward and availability for interviews, both telephonic and in-person.
You are invited to subscribe to this blog via RSS (above) or email (to the right) to track progress on remaking USPTO patent examination procedures.
by Robert J. Sayre
For parts one and two of this series, please see my earlier posts on recent comments regarding reform of the United States Patent and Trademark Office (in particular reforming the "count system") made by new USPTO Director David Kappos and by Secretary of Commerce Gary Locke.
Thanks to Professor Dennis Crouch at the patently-o blog, we now have further evidence that Director David Kappos "gets it." Dennis provides the following quote from a message that Kappos (pictured below, right, while being sworn in by Locke, left) reportedly sent to the USPTO corp of examiners:
One key is to expeditiously identify and resolve issues of patentability—that is getting efficiently to the issues that matter to patentability in each case, and working with applicants to find the patentable subject matter and get it clearly expressed in claims that can be allowed. The examiner and the applicant share the responsibility for the success of this process.
On the subject of quality, there has been speculation in the IP community that examiners are being encouraged to reject applications because a lower allowance rate equals higher quality. Let's be clear: patent quality does not equal rejection. In some cases this requires us to reject all the claims when no patentable subject matter has been presented. It is our duty to be candid with the applicant and protect the interests of the public. In other cases this means granting broad claims when they present allowable subject matter. In all cases it means engaging with the applicant to get to the real issues efficiently—what we all know as compact prosecution. (emphasis added)
Why this matters: under the previous administration, USPTO management unabashedly trumpeted success and measured quality in terms of the percentage of US patent applications rejected, infusing the USPTO with a focus on rejecting patent applications. Those of us who have practiced for more than a decade recall that in the late '90's, for example, a greater spirit of partnership permeated the USPTO, wherein standard practice was for examiners and attorneys to work earnestly in cooperation to identify and define the subject matter (if any) that should be allowed. This approach advanced the USPTO goal of compact prosecution (i.e., expeditiously resolving issues of patentability and speeding examination).
If applicants can:
- regain confidence that patentability will be judged fairly and efficiently,
- see reduced pendencies of their patent applications, and
- reduce costs of prosecution due to effective execution of "compact prosectuion" at the USPTO,
patents will better serve their function in stimulating investment and innovation in the US; and inventors and owners of new techology can enter the market with greater confidence and certainty, while saving time and expense.
To be sure, patent attorneys will likewise need to adjust their practices and, in some cases, unlearn bad habits that may have been seen as advantageous or necessary under a disfunctional system. Going forward, applicants who fail to adapt in parallel with changes in examination policy at the USPTO are likely to suffer.
When I have had the opportunity to directly interact with patent examiners at the USPTO, I generally find them to be talented, smart, dedicated and fair-minded--very honorable public servants. There are also a few examiners on Twitter with whom I converse and share thoughts who likewise demonstrate these qualities--one, in particular, who you may see in my stream, though I will refrain from linking to them here, as I suspect they may not want the attention. Accordingly, the only real problems I have perceived in the examining corps are that they have been forced to work under unrealistic and contrived standards and that so many talented examiners have been leaving the USPTO as they gain experience.
If we can break down the institutional barriers to cooperation and efficiency, as Director Kappos appears committed to achieving, I am highly optimistic that patent quality and efficiency of patent examination will greatly improve, thereby benefiting applicants as well as the general public; and the tri-lateral relations between USPTO management, the examining corps, and applicants should also greatly improve, thereby (among other effects) improving the retention of experienced examiners at the USPTO, which will still further improve examination quality and efficiency.
I will continue to monitor and report on these important developments, and as we see these words put into action at the USPTO, watch this blog for thoughts on how patent applicants can best position themselves under this new paradigm. Subscribe to this blog via RSS
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