USPTO BACKLOG OF PENDING APPLICATIONS

“In the United States, the problem has been solved
by allowing just about everything to be patentable
subject matter. While this solves the problem,
it can not be an answer, as anyone who has
looked at some the results will agree.”

Justice Pumfrey

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 Centers) included:

Medical Instruments (3731) and Diagnostic Equipment (3737) at 46 to 54 months,

Business Methods (3620) at 34 to 106 months (9 years??)

Control Circuits (2836) at 44 months,

Interactive Video Distribution (2611) at 72 months

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 months.

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 practitioners.

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.”

1 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.

2 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.”

3 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 issues.”

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.