The Future of Patents and the USPTO AIPLA 2008 Mid-Winter Meeting January 24, 2008 Brian E. Hanlon Deputy Director, Office of Patent Legal Administration

The Future of Patents and the USPTOThe Future of Patents and the USPTO

AIPLA 2008 Mid-Winter MeetingAIPLA 2008 Mid-Winter Meeting

January 24, 2008January 24, 2008

Brian E. HanlonBrian E. HanlonDeputy Director, Office of Patent Legal AdministrationDeputy Director, Office of Patent Legal Administration

U.S. Patent No. 586,145 Hunting Decoy

TopicsTopics Statistical Update – Why FY 2007 was a record-

breaking year and Patents Operations Update

Strategic Planning & the Future of the USPTO

On-Going Quality Initiatives and Programs Fulfilling the goal of continuous improvement

Helpful Practice Tips

Helpful USPTO Contact Information

STATISTICAL UPDATEWhy FY 2007 was a Record-Breaking Year

and

How the USPTO is Progressing

FY 2007 Quality ResultsFY 2007 Quality Results

Improving Quality is our Highest Priority

2006 Result 2007 Result 2008 Goal

90% in process compliance

92.2% in process compliance

92% in process compliance

3.5% allowance error 3.5% allowance error 4% allowance error

QualityQuality

FY 2007 % allowance error% compliant in-process

examination

Target 4.0% 90.0%

USPTO 3.5% 92.2%

TC 1600 (Biotech) 3.9% 88.3%

TC 1700 (Chemical Eng.) 3.9% 88.3%

TC 2100 (Computers) 3.5% 92.4%

TC 2600 (Communications) 3.5% 92.4%

TC 2800 (Semiconductors) 3.5% 92.6%

TC 3600 (Transport. & BM)) 4.0% 95.3%

TC 3700 (Mechanical Eng.) 4.0% 95.3%

Allowance Error Rate Allowance Error Rate

0.0

1.0

2.0

3.0

4.0

5.0

6.0

7.0

8.0

1975 1980 1985 1990 1995 2000 2005

Fiscal Year

• FY ‘06 419,760

• Growth of 9.2% from ‘05

• FY ’07 440,617

• Growth of 5% from ‘06

050000

100000150000200000250000300000350000400000450000

UPR FilingsUPR Filings

Filings, First Actions, and Filings, First Actions, and BacklogBacklog

0

100,000

200,000

300,000

400,000

500,000

600,000

700,000

800,000

2003 2004 2005 2006 2007

Filings First Actions Backlog

Preliminary End-of-Year Preliminary End-of-Year Statistics (FY 2007)Statistics (FY 2007)

• 440,617 UPR applications filed• 26,626 design applications filed• 769 reexamination requests filed (inter and ex parte)• 5% filing growth over 2006• 9.9% examiner attrition• Patents Staff

•5,477 examiners•376 Supervisory Patent Examiners•100 Quality Assurance Specialists•56 SPE/trainers for Patent Training Academy

Patent Pendency - Patent Pendency - End of Year 2007 End of Year 2007

Technology CenterAverage 1st Action

Pendency (months)1 End of Year FY07

Average Total Pendency (months)2

End of Year FY07

1600 - Biotechnology and Organic Chemistry 22.7 34.3

1700 - Chemical and Materials Engineering 26.1 34.4

2100 - Computer Architecture Software and Information Security 30.7 42.9

2600 – Communications 34.0 43.1

2800 - Semiconductor, Electrical, Optical Systems 17.7 26.5

3600 - Transportation, Construction, Electronic Commerce 25.9 31.6

3700 - Mechanical Engineering, Manufacturing and Products 23.1 29.8

UPR Total End of Year FY 2007 25.3 31.9

1 “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.

STRATEGIC PLANNING

AND

THE FUTURE OF THE USPTO

http://www.uspto.gov/web/offices/com/strat2007/

Patents Strategic Plan Patents Strategic Plan ObjectivesObjectives

#1 Provide high quality examination of patent applications

#2 Improve and integrate existing electronic systems to promote full and electronic patent application processing; implement better/more secure systems

#3 Improve the quality and timeliness of patent examination by exploring a range of approaches to examining applications

A Sample of the A Sample of the Strategic Plan InitiativesStrategic Plan Initiatives

Patent Training Academy

Expand telework & explore establishing regional/remote/local USPTO offices

Explore the development of alternative approaches to examination in collaboration with stakeholders

Peer Review of Published Applications

Accelerated Examination Initiative

First Action Interview Pilot

Design & implement a comprehensive quality system

Examination reform through rule making to focus examination & enhance information exchange

Continued increase of e-filing

Patents Teleworking & Patents Teleworking & Laptop ProgramsLaptop Programs

1000 examiners participating in the Patents Hoteling Program, since initiated in 2006 Program allows examiners to work from home 4 days

per week with USPTO electronic tools

2,314 laptops distributed through PELP About 75% of eligible examiners

Both programs show production gains in line with increase in total examination time

ExaminersAt Work

Virtual Art Unit PilotVirtual Art Unit Pilot 13 Examiners and 1 SPE at home

received full PHP equipment

37 examiners remained on USPTO campus received collaboration tools and training

Random reviews by Office of Patent Quality Assurance

Surveys administered to all examiners in the art unit

Accelerated ExaminationAccelerated Examination Change in practice effective August 25, 2006 AE petitions decided

262 granted 93 allowances 4 abandonments

84 denied on merits 77 dismissed

7 pending disposition

First patent, prosecuted in compliance with AE program, issued March 13, 2007

Guidance provided on the USPTO web site at http://www.uspto.gov/web/patents/accelerated/

First Action Interview PilotFirst Action Interview Pilot Initiative still in the planning stages

Applicant requests to participate

Application is NOT taken out of turn

“Preliminary office action” is prepared and mailed to applicant – condensed version of typical first action on the merits

After interview applicant receives copy of action or allowance with entry of proposed amendment

To be piloted in two workgroups of TC 2100

Proposed and Final Proposed and Final Rules ChangesRules Changes

Claims and Continuing Applications Notice of Final Rulemaking

Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications

Information Disclosure Statements

Alternative Claims

Ex Parte Appeal Practice Before the BPAI

Electronic filingElectronic filing

New EFS-Web system launched March 2006 allows PDF-based submissions replaced XML-based system

2005 result: 2.2% of applications filed electronically2006 goal: 10% of applications filed electronically2006 result: 14.3% of applications filed electronically

FY 2007 results: nearly 50% of applications filed received through EFS-Web; over 1,000,000 (total) follow-on papers and new applications received

Electronic filingElectronic filing

Safe, Simple, Secure

Many corporations, law firms, and independent inventors moving to 100% electronic filing for new applications and follow-on papers.

Electronic FilingElectronic Filing

QUALITYFulfilling the goal of continuous improvement

On-Going Quality On-Going Quality InitiativesInitiatives

Second Pair of Eyes

In Process Reviews

Appeal Specialists

Pre-Appeal Brief Conferences

Appeal Conferences

GS 12 Certification Exam

Primary Examiner Recertification

TC Targeted Areas of Review

Central Reexamination Unit

Second Pair of EyesSecond Pair of Eyes Focuses on reviewing work product at time

of allowance

Tool to gather information for creating training modules

May be performed throughout a TC or in specific areas

In Process ReviewsIn Process Reviews Initiated formally in FY 2003

Statistically significant randomly selected applications are reviewed

Focus of evaluation: Whether rejections are proper Whether a proper rejection has not been made Evaluate search quality

Program began July 12, 2005

Extended February 7, 2006

Over 16,000 conferences requested; approximately 15,000 conferences held During FY ’07, approx. 6,800 conferences held

Decided to proceed to the BPAI over 58% of the time

Pre-appeal Brief ConferencesPre-appeal Brief Conferences

Pre-appeal Brief ConferencesPre-appeal Brief Conferences

Percentage of Pre-Appeal Conference Panel Decisions

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

Year/Month of Panel Decision

Perc

enta

ge Rejection Withdrawn

Defective Request

Proceed to BPAI

Reopen Prosecution

Appeal ConferencesAppeal Conferences

Appeal conference required in every application having a brief (MPEP 1207.01)

Conferees include: Examiner SPE Appeal Conferee (appeal specialist, another

primary or QAS)

GS 12 Certification ExamGS 12 Certification Exam Implemented in FY 2004

Ensures that examiners have up to date knowledge of Office procedures and policies

Confirms through testing that examiners have achieved skills to merit the grant of legal competency and negotiation that occurs with a promotion to GS-13

TC Targeted Areas of TC Targeted Areas of ReviewReview

Technology Centers focus on areas where greatest area of impact is made

May Include: Augmenting in-process reviews Target second pair of eyes review in specific

art areas Target specific actions for review (first office

action, finals, etc.)

Central Reexam Unit (CRU)Central Reexam Unit (CRU)

Initiated in July 2005 to improve quality & timeliness of patent reexaminations

Currently, approximately 1000 total ex parte reexamination proceedings pending in the CRU; approximately 180 inter partes pending in the CRU

CRU hiring plan

Central Reexam Unit (CRU)Central Reexam Unit (CRU)

48 Primary Examiners Varied technical expertise

Reexam experience

Additional legal training

Motivated and collegiate

Quality focused

Helpful Practice Tips

Use current USPTO prepared forms when one is available. Do not, however, use an old version of a form. An old version probably does

not comply with current Office rules and requirements. For example, an old version of the oath or declaration form may not have the

correct statement regarding the duty to disclose under 1.56.

How do you know if a form is a current version? All current USPTO forms are listed, and can be found, at:

http://www.uspto.gov/web/forms/index.html#startforms Each form indicates its revision or version date in the upper right corner.

Check the version date indicated in the upper right corner of the form you want to use against the version date on the form on the web page to see if you are using a current version.

Many Office forms have been revised so that they are now electronically fillable.

Application Preparation Tips: Use Application Preparation Tips: Use USPTO FormsUSPTO Forms

Do not alter the language on USPTO forms. Altering the language might mislead a USPTO official to accept an altered

certification or statement that might otherwise not be acceptable.

If a form is altered by a non-USPTO person (e.g., a practitioner), the USPTO indicia must be removed so it will not appear to be an Office approved form. Thus, the following must be removed from an altered Office form:

The USPTO form number; The statement regarding approval; The OMB number; and The USPTO collection information in the footer.

See http://www.uspto.gov/web/forms/index.html

Application Preparation Tips: Avoid Application Preparation Tips: Avoid Altering USPTO FormsAltering USPTO Forms

Do not use a combined declaration/power of attorney (POA) form: Do use a separate declaration form and a separate power of attorney

form.

Use of a combined form could be a problem if: A continuation is filed, and it includes a copy of the original

declaration/POA but the POA was changed in the parent application (MPEP 201.06(c)II, IV);

The assignee is the real client, not the inventor. The POA should be from whomever is controlling the attorney (the real client).

Who is paying the fees, including the atty fees? Who is consulted when decisions have to be made?

Application Preparation Tips: Separate Application Preparation Tips: Separate the POA from the Declaration/Oaththe POA from the Declaration/Oath

Note the following rules, and canons from Part 10 of 37 CFR: § 10.56: Canon 4: A practitioner should preserve the confidences

and secrets of a client. § 10.57: “Confidence” and “Secret” defined, and guidelines given

for related actions. § 10.61: Canon 5: A practitioner should exercise independent

professional judgment on behalf of a client. § 10.68: Avoiding influence by others than the client. § 10.76: Canon 6: A practitioner should represent a client

competently. § 10.83: Canon 7: A practitioner should represent a client

zealously w/i the bounds of the law.

Application Preparation Tips: Application Preparation Tips: Separate the POA from the Separate the POA from the

Declaration/OathDeclaration/Oath

If you do not want your application to be published under 37 CFR 1.211: Before filing an application, check to see if required threshold condition exists, namely that:

the invention disclosed in the application has not been and will not be the subject of an application filed in another country (or under international agreement) that requires eighteen-month publication of any application.

If the threshold condition exists, submit an executed USPTO form PTO/SB/35 with the filing of a utility or plant application.

This will ensure compliance with the requirement to conspicuously request non- publication on filing. NOTE: Non-publication requests submitted after filing are not permitted.

PGPubs will now generally include all preliminary amendments to claims, the abstract, and drawings submitted in time to be included in the publication. To have the PGPub include information that was not part of the application as filed, submit an

appropriate preliminary amendment in compliance with EFS filing requirements and 37 CFR 1.215. (Note the PreGrant Publication tab when filing.)

New matter is not permitted. Amendments to the specification require a substitute specification.

Pre-Grant Publication Tips: How to Avoid Pre-Grant Publication Tips: How to Avoid PGPub; Preliminary Amendments Now Included PGPub; Preliminary Amendments Now Included

in PGPubin PGPub

Provide assignment information. Provide any assignment information at the time of filing via the

transmittal letter or ADS, or during pre-examination processing via an ADS or a Supplemental ADS.

Use accurate spelling of inventor names or assignees. Use an ADS, or a supplemental ADS, since the data on an ADS is

automatically uploaded (thus avoiding transcription errors). Note that the data taken from an ADS is relied upon when there are inconsistencies in the application papers.

Review Information on filing receipt. Promptly review the filing receipt carefully: check inventor names,

title of the invention, benefit claims, the projected publication date, and assignment information.

If you find an error, request correction before export of data for publication.

Pre-Grant Publication Tips: Ensure the Pre-Grant Publication Tips: Ensure the PGPub has Correct InformationPGPub has Correct Information

If you want to have your application re-published to correct an error by applicant under 1.221(a): remember to submit an electronic copy of the application filed in compliance with

EFS requirements, and the appropriate fees. MPEP 1130.

If you want to have your application re-published to correct an error by the Office under 1.221(b): request must be filed within 2 months of the publication and must include a showing

of material error(s) made by the Office. Applicants often file requests that are late (i.e., after 2 months from publication),

and fail to recite material errors, e.g., claims, critical part of spec, all drawings, or benefit claims omitted. MPEP 1130.

Do not request republication if error(s) are not material. MPEP 1130.

Pre-Grant Publication Tips: Re-Pre-Grant Publication Tips: Re-publication of a PGPub to Correct publication of a PGPub to Correct

ErrorsErrors

Always Reply to a Notice of Allowance and Fee(s) Due by returning a completed Part B of form PTOL-85: even if applicant is paying the issue fee and/or publication fee

electronically; or even if an issue fee has been previously paid and another Notice of

Allowance and Fee(s) Due is subsequently mailed (which indicates a credit for the prior payment, such that no fees are actually due).

Applicants are required to timely reply to the Notice by submitting a completed Part B of the form PTOL-85, or its equivalent, in order to request the reapplication of the previously paid issue fee, and to update assignee and attorney information.

Post Allowance Tips: Always Timely Post Allowance Tips: Always Timely Return PTOL-85 Part BReturn PTOL-85 Part B

Signature requirements for submitted papers:

Papers filed with the Office may not be signed by non-registered personnel, such as assistants, paralegals or legal administrators. See 37 CFR 10.18(a) and (b).

Make sure that papers submitted for a corrected filing receipt, a supplemental application data sheet (ADS), a request for corrected publication, etc., are signed by: a registered practitioner, applicant(s), or under certain

circumstances, an assignee.

General Practice Tips: Who Can Sign General Practice Tips: Who Can Sign Papers Submitted to the Office?Papers Submitted to the Office?

Do not draft a check to the USPTO for services on an account with insufficient funds.

Do not place a stop payment on a check for USPTO services. Placing a stop payment on a check to circumvent rules of

practice is not appropriate.

Consider replenishing your deposit account at the USPTO and paying a maintenance fee on-line via the Internet. https://ramps.uspto.gov/eram.

General Practice Tips: Payment of General Practice Tips: Payment of Fees to the OfficeFees to the Office

Before you contact the USPTO (e.g., USPTO help lines or the examiner) to ask a question:

Try to first do some research to find the answer to the question, Such as by consulting the current version of the Manual of Patent Examining

Procedure (8th Ed., Rev. 6, September 2007) (MPEP), and the USPTO website.

The MPEP is available at: http://www.uspto.gov/web/offices/pac/mpep/mpep.htm

Do not ask non-practitioner support staff (e.g., legal secretaries) to contact the USPTO to discuss the merits of a patent application.

General Practice Tips: What Do You General Practice Tips: What Do You Do When You Have a Problem?Do When You Have a Problem?

Helpful USPTO Contact Information

Technology Center Telephone Contacts Technology Center 1600 571-272-1600

Technology Center 2800 571-272-2800







Further InformationFurther Information

General Information Number 800-786-9199 or 571-272-1000

Central Facsimile Number 571-273-8300


USPTO Phone Numbers

This Organization At This Number Provides Information On:

Assignment Recordation 571-272-3150 Office of Document Services: USPTO Branch 800-972-6382 of assignments

Board of Patent Appeals 571-272-9797 Status of pending appeals & oral & Interferences (BPAI) hearing requests

CD-Rom & DVD Sales 571-272-5600 Sales of Patent and Trademark electronic information

Certificates of Correction 703-305-8309 How to correct a patent

Certification 571-272-3150 or Office of Document Services: 800-972-6382 Obtaining certified copies of patents

Central Reexam Unit (CRU) 571-272-7705 Reexaminations located in the CRU

Deposit Accounts 571-272-6400 Office of Finance: How to set up an account & status

Electronic Business Center571-272-4100 or Fax problems with 571-273-8300, 866-217-9197 EFS and PAIR


USPTO Phone Numbers (cont’d)

This Organization At This Number Provides Information On:

Enrollment & Discipline 571-272-4097 The Patent Practitioner’s exam, registration

Fee Questions 571-272-6400 Office of Finance: Patent & Trademark fees

File Information Unit (FIU) 703-308-2733 Inspecting and copying publicly available files

Filing Receipts 571-272-4000 OIPE - Status, corrections, copies of filing receipts

Finance, Office of 571-272-6400 Fee payment information

Foreign Filing License 571-272-8187 Licensing & Review: Filing in a foreign country

Freedom of Information Act571-272-3000 Office of the General Law: Questions about FOIA

Initial Patent Exam. (OIPE) 571-272-4000 Applications that are located in OIPE


USPTO Phone Numbers (cont’d)This Organization At This Number Provides Information On:

Inventors Assistance Center 800-786-9199 General questions on patent process, forms, information packets

Licensing & Review 571-272-8203 Applications relating to national security

Maintenance Fees 571-272-6400 Office of Finance: Payment of maintenance fees

Public Search Room 571-272-3275 Search resources available to the public

Patent Publications 571-272-4200 or Applications that are in the 888-786-0101 publication cycle

Patent Copy Sales 800-972-6382 How to order patent copies

Refunds 571-272-6400 Office of Finance: How to get a refund


Office of the Deputy Commissioner for Patent Examination Policy (DCPEP)

Office of Patent Legal Administration (OPLA) 571-272-7701 – Legal questions line (policy, rules, MPEP) 571-272-7702 – Patent Term Adjustment (PTA) & Extension (PTE) 571-272-7703 – Questions relating to Reexamination, Reissue and the

Revised Amendment Practice (37 CFR 1.121) 571-272-7704 – Questions related to Claims and Continuations Rule package,

Benefit claims (35 USC 119(e), 120, 121 and 365(c)) and 35 USC 102(e)

Office of Petitions 571-272-3282 – Petitions Help Desk

Office of Patent Cooperation Treaty Legal Administration 571-272-4300 – PCT Help Desk


USPTO Useful Web Links (http://www.uspto.gov) Helpful Web Pages:

Notices, Recent Patent-Related – a very current list of all Federal Register, Official Gazette and pre-Official Gazette notices, and certain Office memoranda: http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html

Forms Page – current USPTO forms available for use by the Public: http://www.uspto.gov/web/forms/index.html

Manual of Patent Examining Procedure (MPEP): http://www.uspto.gov/web/offices/pac/mpep/mpep.htm



USPTO Useful Web Links (cont’d) Mailing Addresses and Mail Stops:

http://www.uspto.gov/web/offices/com/sol/og/patboxs.htm

Facsimile Numbers: http://www.uspto.gov/web/offices/com/sol/og/2005/week28/patfaxs.htm

USPTO Glossary: http://www.uspto.gov/main/glossary/index.html

Contact InformationContact Information

Brian E. Hanlon

Deputy Director, Office of Patent Legal Administration (OPLA)

e-mail: [email protected]

Phone: 571-272-5047

Thank you.Thank you.

Documents

The Future of Patents and the USPTO AIPLA 2008 Mid-Winter Meeting January 24, 2008 Brian E. Hanlon Deputy Director, Office of Patent Legal Administration