USPTO BACKLOG OF PENDING
"In the United States, the problem has been
by allowing just about everything to be patentable
While this solves the problem,
it can not be an answer, as anyone who has
at some the results will agree."
The US Patent and Trademark Office (USPTO) has
published statistics of the existing backlog of pending application awaiting
examination.1 It has also published hiring and employment retention
statistics for examiners. The news is not particularly encouraging.
It should not be a surprise that there is a
significant wait time for applications pertaining to electronic commerce.
Citing Dennis Crouch’s analysis, the backlog for TC 3620 “Electronic Commerce”
is 35 months. For computer security, TC 2130 “Cryptography, security” the wait
is 39 months.
More alarming, John Doll, Acting Commissioner
of Patent, presented statistics (assessable on the Internet) to the National
Association of Patent Practitioners on July 19, 2005. Commissioner Doll
provided examples (best and worst case) of the average 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 as of January 2005 at the
current (July 19, 2005) production rate.
The “high inventory art units” (Technical
Medical Instruments (3731) and Diagnostic
Equipment (3737) at 46 to 54 months,
Business Methods (3620) at 34 to 106 months (9
Control Circuits (2836) at 44 months,
Interactive Video Distribution (2611) at 72
Computer Task Management at 62 months
Drugs (1614), Bio-affecting (1615) and Body
Treatment (1617) at 47 to 53 months.
Again, the source for this is the power point
presentation of Commissioner Doll on July 19, 2005. These statistics, taken
without his verbal presentation, may mis-characterize the seriousness of the
delays.2 However, I believe there is general agreement that there
exist unacceptable backlogs or inventories of pending applications.
In contrast to the presentation of Commissioner
Doll, a recently completed GAO report (discussed more below) found the average
pendency between filing and first office action to average only 20 months. The
longest pendency was found in the Technology Center
3600 (Computer Architecture, Software and Information Security) at 33 months.
The average pendency between filing and disposition was stated to average 27
In regard to the experience or length of
service of the Corps of examiners, the statistics are (to me) sobering. The
percentage of new hires (as defined by Commissioner Doll) range from 8% to 36%
of the staff within the Technical Centers. The average is 23% for the entire
Corps of examiners.
In my opinion, the examiners have a difficult
task. They are required to have in-depth knowledge of the procedural rules
pertaining to patent examination and patentability (subjects that are
continually changing) and in-depth knowledge of specific technology areas. They
also have to be able to comprehend the writings of a multitude of patent
In stated recognition of the challenges facing
the USPTO, the General Accounting Office (GAO) recently completed a study of the
USPTO operations.3 The Report was published in June of 2005 and is
accessible on the Internet.
The GAO Report (the Report) concluded that the
USPTO has fully or partially implemented only 8 of 15 initiatives aimed a
reducing pendency of applications. The USPTO cited lack of funding as the
primary reason for not accomplishing all initiatives.
The Report credited the USPTO for taking steps
to attract and retain qualified examiners. However the Report cautioned that
during times of national economy is doing well, the USPTO has historically had
difficulty recruiting and retaining qualified staff.
The Report also credited the USPTO with having
fully or partially implemented all “Capability Initiatives to Enhance Quality
Assurance”. These initiatives include an expanded quality assurance program,
e.g. “work in progress” reviews, establishing a “second pair of eyes” review in
each Technology Center,
enhancement of the quality of examiners’ literature searches and enhance
reviewability of the patent prosecution record.
As indicated above, the USPTO was faulted in
the Report for not implementing initiatives for improved productivity. These
initiatives included offering patent applicants an option for accelerated
examination (See Petition to
Make Application Special ) and revision of post grant review procedures to
allow greater public input.
Finally, the Report summary “What GAO Found”
includes the following:
“USPTO faces three long-standing challenges
that could also undermine its efforts to retain a qualified workforce: the lack
of an effective strategy to communicate and collaborate with examiners; outdated
assumptions in production quotas it uses to reward examiners; and the lack of
required ongoing technical training for examiners. According to patent
examiners, the lack of communication and a collaborative work environment has
resulted in low morale and an atmosphere of distrust that is exacerbated by the
contentious relation ship between management and union officials. Also, mangers
and examiners have differing opinions on the need to update the monetary award
system that is based on assumptions that were established in 1976. As a
result, examiners told us they have to contend with a highly stressful work
environment and work voluntary overtime to meet their assigned quotas.
Similarly, mangers and examiners disagree on the need for required ongoing
technical training. Examiners said they need this training to keep current in
their technical fields, while managers believe that reviewing patent
applications is the best way for examiners to remain current.”
Dennis Crouch has published a very helpful
analysis of the average backlog (in months) by individual USPTO Technical Center.
This information can be accessed via his blog at www.patently-O.com.
Commissioner Doll’ presentation contains a
footnote stating “Of course, USPTO is taking aggressive steps to ensure changes
that will significantly lower the inventory rates in high-inventory art areas.”
The GAO Report answers it own question as to
why it conducted the study of the USPTO, stating “(r)ecent increases in both the
complexity and volume of patent applications have increase the time it takes to
process patents and have raised concerns about the validity of the patents USPTO
The heading quotation is from the written opinion of The Honorable Mr Justice
Pumfrey in Halliburton Energy Services Inc. and Smith International (North Sea)
Ltd. et al., July 21, 2005.