USPTO Reduces Patent Pendency – But Is That Good News for Inventors?

Submitted by patentadmin on Mon, 12/12/2011 - 14:30

By David Ziskind, IP Counsel - In a December 12, 2011 PatentlyO blog entry, Patent Law Analysis by Professors Dennis Crouch and Jason Rantanen[1], the authors notice a trend that average patent application pendency has leveled off (and in fact has begun to recede to a time period of three years or less) in the years between 2010-2011. To the untrained eye this is obviously a good thing for the small inventor/entity, who may have expended a lot of resources in obtaining U.S. patent protection. However, anything but the most cursory analysis of the data would reveal a disturbing event. In order to minimize application pendency, the USPTO instituted a program called COPA (Clearing Old Patent Applications), in which certain Tech Centers (workgroups of patent examiners examining similar art, and situated in the same Tech Center) were told to rebalance their workload and review any pending applications with an actual filing date of June 7, 2009.[2]

In the USPTO’s defense, brief technology tutorials were given, people were made available for help and extra time was given for the examiner to get up to speed with the new technology.  However, a tutorial is no substitute to give the appropriate level of knowledge and experience within the art, especially in respect of motivations to combine two or more references under 35 U.S.C. §103(a).  While patent examiners try to do their best, I can only foresee more appeals to the BPAI (Board of Patent Appeals and Interferences, now renamed as the Patent and Trial Appeals Board), challenging the examiner’s Final Office Actions under at least §103(a). 

The reduction of patent pendency may have been politically necessary to justify its future budget requests, as the Congress still holds the purse strings. However, shifting prosecution of pending applications from Tech Centers that specialize in respective arts to those that have less of a workload will inevitably lead to declining quality of both the examination and also the issued patents.[3]  The reduction of patent pendency should not be done at the expense of a reduction in patent quality, which can only be assured if issued patents may be of lesser quality than if an examiner who is an expert in his field were making the patentability determination.

[1] In its annual Performance and Accountability Reports, the USPTO publishes a statistic identified as the "Pendency time of average patent application." The reports describe the figure as the "average time (in months) between filing and issuance or abandonment of utility, plant, and reissue applications. This average does not include design patents." For 2011, the PTO was successful in keeping average pendency under three years.

[2] John Barlow, Tech Center 2800, USPTO: Clearing the Oldest Patent Applications (COPA)(Kickoff April 7, 2011)

[3] With respect to the junior examiners, the approvals of these actions are also signed by either a Supervisor Patent Agent, or Primary Examiner, who is essentially in the same boat as the junior examiner.

Submitted by Anonymous (not verified) on Mon, 05/28/2012 - 14:46


Unfortunately, USPTO Dir. David Kappos has the thankless job of undoing a prior decade of mismanagement within his new office. Given the choice between improving patent quality and cutting into the backlog, I can see how the latter option would win, for now.

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