1 patent operations: updates & highlights austin intellectual property law association austin,...
TRANSCRIPT
1
Patent Operations: Updates & Highlights
Austin Intellectual Property Law AssociationAustin, TX
March 23, 2010
2
Topics
Statistics - Filings/Backlog/Pendency
Programs and Recent Initiatives Pendency-related
• Compact Prosecution & Interviews • Programs that expedite prosecution• Count System Revisions
Quality-related• Quality Task Force• Revised FY10 Quality Measures
3
Filings, First Actions, & Backlog
471,382
528,685
611,114
701,147
760,924 771,529735,961
200,000
300,000
400,000
500,000
600,000
700,000
800,000
900,000
2003 2004 2005 2006 2007 2008 2009*Filings First Actions Backlog
FY09• Backlog decreased 4.6%
• Filings decreased 1.7%
•1st Actions increased 10%
4
End-of-Year Statistics (FY 2009)
460,924 UPR applications filed 25,575 design applications filed -1.7% filing decline from 2008 6.3% attrition (9.5% in FY08, 9.9% in FY07) Patents Staff is composed of the following:
• 6,242 UPRD examiners• 454 Supervisory Patent Examiners• 100 Quality Assurance Specialists
5
Patent Pendency – 4th QTR 2009 compared to 1st QTR FY 2010
Technology Center Average 1st Action
Pendency (months)1 4th Quarter
FY09
Average 1st Action
Pendency (months)1 1st Quarter
FY10
Average Total Pendency (months)2
4th Quarter FY09
Average Total Pendency
(months) 1st Quarter FY10
1600 - Biotechnology and Organic Chemistry 22.5 22.0 35.1 34.7
1700 - Chemical and Materials Engineering 25.9 25.6 37.4 36.7
2100 - Computer Architecture Software 29.4 30.3 40.7 41.1
2400 - Networking, Multiplexing, Cable, and Security
28.6 27.8 47.7 45.5
2600 – Communications 33.0 32.2 42.7 43.2
2800 - Semiconductor, Electrical, Optical Systems
20.8 21.2 29.7 29.8
3600 - Transportation, Construction, Electronic Commerce
24.4 25.2 35.1 34.9
3700 - Mechanical Engineering, Manufacturing and Products
26.5 27.1 35.5 35.8
UPR Total 25.8 25.9 34.6 34.81 “Average 1st action pendency” is the average age from filing to first action for a newly-filed application.2 “Average total pendency” is the average age from filing to issue or abandonment of a newly-filed application.
6
Mock-up of the Patents Dashboard
Jun-09 Jul-09 Aug-09 Sep-09 Oct-09 Nov-09
Total UPR Filings 41,569 37,910 35,944 39,892 37,664 36,244
RCE Filings 12,641 12,479 11,461 11,597 11,165 11,282
2nd and subsequent RCE Filings 3,350 3,449 3,090 3,276 3,238 3,470
% RCE of Total 30.4% 32.9% 31.9% 29.1% 29.6% 31.1%
UPR Allowance rate 40.6% 40.3% 40.4% 41.3% 41.3% 43.3%
Allowance rate without RCE abandonments 57.8% 57.3% 57.2% 57.3% 56.4% 57.4%
Number of Allowances 136,238 150,230 165,602 189,120 23,461 42,911
UPR Backlog 733,339 733,273 725,833 718,835 722,835 726,098
RCE Backlog 17,209 19,666 19,555 14,620 17,763 18,114
RCE to FAOM (months) 2.07 2.06 2.06 2.07 2.07 2.05
Months of Inventory 26.5 26.5 26.3 26.0 26.1 26.1
UPR Pendency FA (months) 25.6 25.3 25.4 25.8 26.1 26.1
Total Pendency (RCE reset) 33.9 34.0 34.3 34.6 34.5 34.7
Total Pendency (No RCE reset) 40.2 40.2 41.7 42.1 42.5 42.8
UPR Examiner Staff 6,157 6,208 6,170 6,145 6,126 6,107
UPR Backlog per examiner 119.1 118.1 117.6 117.0 118.0 118.9
Design Filings 2,191 2,293 1,954 2,290 2,315 2,133
Design Backlog 18,262 18,590 17,761 17,126 17,409 17,297
7
Pendency-Related Initiatives
Putting the focus back on Compact Prosecution
Emphasizing complete, high-quality first actions
Reducing rework by avoiding unnecessary RCEs and avoiding office actions that do not advance prosecution
8
Actions Per Disposal
2.34 2.38 2.40 2.32 2.26 2.27
2.602.76
2.85 2.912.73
0.00
0.50
1.00
1.50
2.00
2.50
3.00
3.50
1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009
Actions Per Office Disposal
9
RCE and Continuations Percentage of Total UPR Filings
RCE and Continuations Percentage of Total UPR Filings *as of December 31, 2009
6.1% 6.7%7.8% 7.9% 7.9% 8.0% 7.8% 7.6% 7.8%
6.8% 6.9%
11.0% 10.7% 10.4%
12.6% 13.0%14.4%
17.8%19.7%
24.1%
30.1%
27.8%
0%
5%
10%
15%
20%
25%
30%
35%
FY 2000 FY 2001 FY 2002 FY 2003 FY 2004 FY 2005 FY 2006 FY 2007 FY 2008 FY 2009 FY 2010*
CON/ Total UPR Filings RCE&CPA&R129/ Total UPR Filings
10
Pendency-Related Initiatives: Examiner and SPE Training
Compact Prosecution Training- Completed in early FY2010.Focused on claim interpretation, proper search, clear and complete first Office actions, early indication of allowable subject matter, telephone interview practice, proper final rejection practice (including treatment of applicant’s arguments), and after-final practice.
Interview Training- Completed in late FY2009.Focused on conducting effective interviews.Encouraged examiners to hold interviews earlier in prosecution so that issues and potentially allowable subject matter can be identified early in the examination process.Also encouraged examiners to hold interviews later in prosecution to reduce unnecessary RCE filings.Training Materials on Web site: www.uspto.gov/patents/law/exam/interview_practice_training_summary.pdf
11
What can practitioners do to help regarding interviews?
Tips for an effective interview
- Submit an agenda using PTOL-413A to outline the
purpose and intent of the interview;
- Be prepared to discuss the issues raised in the
Office action; and
- Propose claim amendments to overcome applied
prior art rejections
12
What can practitioners do to help regarding After-Final interviews?
Normally, one interview after final rejection is permitted
if allowance or clarification for appeal can be
accomplished with only nominal further consideration.
(See MPEP 713.09).
The intended purpose and content of the interview
should be briefly presented, preferably in writing using
PTOL-413A.
An after-final interview should not be held merely to
restate arguments of record or to discuss new limitations
which would require more than nominal reconsideration.
13
What can practitioners do to help advance prosecution?
Amend claims clearly to overcome prior art
and any rejections under 35 U.S.C. 112,
second paragraph.
Amend claims to include allowable subject
matter as indicated by the examiner.
Point out support for claim amendments.
Argue limitations that are in the claims.
14
What can practitioners do get things moving After-Final ?
Request an after-final interview
File a petition under 37 CFR 1.181 if finality of Office action is improper
File a pre-appeal brief conference request
File a notice of appeal and appeal brief
File an RCE with an amendment to further distinguish the claims over the prior art
15
Programs to expedite prosecution
and reduce pendency
• First Action Interview (FAI) program expansion
• Accelerated Examination (AE) program • Patent Prosecution Highway (PPH)• Green Tech application program
16
First Action Interview Pilot Program
• Promote personal interviews prior to issuance of a first Office action on the merits
• Advance examination of applications once taken up in turn
• Facilitate resolution of issues for timely disposition Program Overview• Applicant must request participation• After receipt of a pre-interview communication, an
interview is held prior to a First Action on the merits• Applications in the original pilot had a six-fold First
Action Allowance rate compared to cases outside of the pilot
»Original pilot included two technology areas – computer networks and database
17
First Action Interview Pilot Program:Statistics as of January 12, 2009
732 Applicants have joined the pilot program 416 Pre-interview Communications (PFA OA) have been
mailed 335 Interviews have been conducted 282 First Action Interview Office Actions have been mailed 163 Allowances Areas in expansion
1610, 1795, 2160 (in original pilot), 2440/50 (in original pilot), 2617, 2811+, 3670 and 3760.
Eligibility and other information is available at:www.uspto.gov/web/offices/pac/dapp/opla/preognotice/
faipp_enhanced.htm
18
Accelerated Examination (AE) Program
Consider the Accelerated Examination (AE)
Program
See MPEP 708.02(a) for the requirements and further
information.
Additional information is also available on the USPTO’s
Web site at
www.uspto.gov/web/patents/accelerated/
19
Revisions to the Examiner Count System: Director’s Task Force Objectives
Provide examiners with incentives to:– Address issues early in the examination process– Reach out to applicants
Reduce rework Deliver net gain for all stakeholders Improve working conditions Develop initial plan and institute an iterative
process for improvement Do no harm
20
Revisions to the Examiner Count System: Overview of Proposed Package
Combination of count system changes and more time for examiners– More time overall (increase in Hrs/BD)– More time for FAOM (shift in counts so FAOMs get more credit)– Provide time for examiner-initiated interviews– Diminish credit for RCEs– Consistent credit for transferred or “inherited” amendments
Revised Production Award Program
Process changes– Increase work credit certainty for examiners– Increase fairness to applicants by implementing a more disciplined examination order– Balance the load on IT systems by encouraging earlier submission and review of work
Improved working conditions– Reduce examiner reluctance to allow applications– Shift resources from a focus on Examiner Recertification to front-end quality
improvements
21
Revisions to the Examiner Count System: Anticipated Results
Set the foundation for long-term pendency improvements Focus on quality work up front by increasing production
credit for first action and by providing more overall examining time
– Increase in customer satisfaction
Identify allowable subject matter earlier in prosecution
– Increase in examiner-initiated interviews
– Decrease in actions per disposal due to compact prosecution
Rebalance incentives both internally and externally resulting in decreased rework
Support examiner ownership of transferred or inherited cases by providing consistency in production credit
Increase examiner morale leading to reduced attrition
22
Quality-Related Initiatives
Quality Task Force Revised FY10 Quality Measures Examiner Quality Initiatives
23
QUALITY TASK FORCE
Purpose: To identify the most important and accurate indicia essential for a quality patent, and to implement measures to gauge this indicia and improve patent quality.
24
Quality Task Force Next Steps
Federal Register Notice Requesting Public Comment (Published December 9th, 2009)
Gather/Evaluate Previous Quality Studies
Public Roundtable
25
Proposed FY10 Quality Measures
Revised Metrics1
New Final Rejection/Allowance Compliance Rate metric
Stand alone Non-Final In-Process Review (IPR) Compliance Rate metric
Modified Sample DesignReduced volume of end-process (allowance)
reviewsIncreased sampling emphasis on Non-Final
Action In-Process Reviews
1Metrics through FY09: Allowance Compliance Rate and combined Non-Final and Final Action In-Process Compliance Rate
26
Proposed FY10 Quality Measures
Final Rejection/Allowance metric focuses on the correctness of the examiners’ overall determination concerning the patentability of the claims in the decision to finally reject or allow claims.
Stand alone Non-Final IPR metric and increased sampling emphasis focuses on the quality of examination early in prosecution rather than on the end product.
Reduction in the volume of end-process reviews increases OPQA resources available to the Technology Centers to assist with training and quality improvement initiatives.
Redirects resources to improve the quality of work products produced rather than checking the end product
27
FY09 and FY10 sample design: Comparison of relative proportions of action types sampled
0
10
20
30
40
50
60
FY 09 FY 10
Allowances
Non-FinalActions
Final Actions
28
Definitions of Metrics
Final Action/Allowance Compliance Rate The Final Rejection/Allowance Compliance Rate is
determined on the basis of a review of a randomly selected sample of allowed applications and finally rejected applications. The compliance rate is the percentage of reviewed applications in which no deficiency is found with respect to the examiners’ final determination concerning the patentability of the claims. An allowed application is considered to be compliant if none of the allowed claims are found to be unpatentable. Finally rejected applications are considered to be compliant if they are free of "in-process examination deficiencies" or IPEDs, which are instances of clear error, as defined by the examiners' performance appraisal plan (PAP), that have a significant adverse impact on the ability of applicant to advance the prosecution on the merits of the application.
29
Definitions of Metrics
Non-Final In-Process Compliance Rate The Non-Final In-Process Compliance Rate is
determined on the basis of a review of a randomly-selected sample of allowed applications. The percent of non-final actions reviewed in which no examination deficiency is found. Examination deficiencies, which are termed "in-process examination deficiencies" (or IPEDs), are instances of clear error, as defined by the examiners' performance appraisal plan (PAP), that have a significant adverse impact on the ability of applicant to advance the prosecution on the merits of the application.
30
Quality Initiatives throughout the Corps
• Recapture resources from OPQA to provide training/support
• Recapture resources from the PTA • Focus on outliers (Using QIR data) in areas such as
multiple non-finals, multiple finals, and high RCE filings
• Improve the TC’s classification/transfer process by providing training and re-focus on proper classification
• Corps-wide 101 training• Providing Examiner Interview/Negotiation Training• Management Skills Enhancement
31
Quality Initiatives throughout the Corps:
Search Training
• Provide training and enforcement of text and classification searching
• Peer-to-Peer Search Strategy Training – Each SPE designated one outstanding searcher from among their employees
• One-on-One Patent Search Information Exchange – for all confirmed errors based on newly found art, the reviewer will meet with the examiner to explain the search used to find the prior art and evaluate the search actually conducted by the examiner
• Developed SPE Survey for assessing the search training needs for each art unit
