The Patent Public Advisory Committee (P-PAC) was created by the American Inventors Protection Act of 1999 to advise the Director of the PTO on management of patent operations within the Office. P-PAC consists of IP attorneys, inventors, law professors, entrepreneurs, consultants and other members of the public who have diverse interests in the US patent system. P-PAC the policies, goals, performance, budget, and user fees in making its recommendations to the Director.
P-PAC released its Annual Report on December 1. In the report, the Committee lists as one of the critical issues facing the PTO the need to reduce patent pendency, that is the time between the filing of a patent application and allowance or final rejection or other disposition by the PTO. The Report notes that:
The Committee firmly believes that conquering the pendency/backlog problem will not be achieved unless and until the Office makes a very public commitment to reducing average pendency across all applications to 24 months within the next 24 months.
That seems like an extremely difficult goal, but the Report goes even further:
The Committee also desires  the Office to commit to a longer range (3 year) plan and timeline to drive to an ultimate pendency goal of 18 months from filing to final disposition.
Anybody who is associated with patent prosecution knows that application pendency at the PTO is a problem and that there is a need for reduction. In the PTO’s 2008 FY Performance and Accountability Report, the Office lists the average time to a first Office Action at 25.6 months and the average total pendency time at 32.2 months. Some art units are much slower than this. The average filing date for applications receiving first Office Action in the last 3 months in Art Unit 2680-Business methods is March 21, 2005 (no action for over 3.5 years).
So, the PTO needs to cut 8.2 months off the average pendency in the next 24 months? That sounds challenging, but might be possible. The Committee goes further by noting that the PTO’s definition of pendency is from the time the application is filed to the time it is allowed, appealed, or abandoned. The Committee seeks to change the definition of pendency to the time from filing of the initial application for an invention to the final disposition “where the final disposition means where no further action by the examiner is required such as when the case is finally allowed, appealed or abandoned with no re-filing.” In other words P-PAC would define pendency as the time between the filing of an initial priority application and the final disposition of an continuation application or RCE. This, plus the time reduction goals, make the P-PAC’s aim impossible.
Putting aside the question of how this would be accomplished with PCT applications which have a 30 month procedure prior to national stage entry, what proposals does P-PAC have to accomplish this task? Actually, very few. The only real proposal has to do with examiner hiring and retention.
The Report notes that there are currently 6099 patent examiners, plus a number of supervisors and others involved in the examination process. The PTO has been and continues to have as a goal hiring 1200 new examiners per year. The goal is to have an examining corps of 8400 by 2014. The problem is that the Office has been experiencing an attrition rate of 7-8% for the last few years, which is actually somewhat better than it has been historically. First year examiners have a much higher attrition rate of 13-18%; the data actually suggest that after year 3, attrition drops to 4%.
One method the PTO has been using to increase examiner retention is its telework/hoteling program. This program allows examiners to work mostly from home and they are only required to come to the Office once per week. This reduces commuting time and frees up office space at the PTO.
P-PAC wants to eliminate the weekly office time requirement in order to permit examiners to live anywhere in the US. The current rules requiring the examiners to report to the Office once per week, to pay for all travel expenses to get there, and to not receive time credit for traveling to the Office have resulted in only 52 examiners living outside of commuting distance of Alexandria. By eliminating the face-time requirement, examiners could live in California, Idaho, or Texas. This should make it easier to hire and retain talented individuals and aid the PTO in meeting its retention goals.
This is an interesting idea that the PTO should explore further. Since many applications are filed by companies and inventors outside of the Washington DC area, it should not be a problem to have patent examiners in other states. Expanding the talent pool available for potential examiners can only be a good thing.