The PTO has released its Annual Performance Report for FY 2009 and the news is not good.
The report describes FY 2009 as a time of economic crisis at the PTO. The agency anticipated fee collections for FY 2009 at $2.0101 billion, but due to decreased patent filings and maintenance fee payments collected only $1.8742 billion. That left the PTO with a budget shortfall of $135.9 million, or 6.8% of forecasted revenue. Indeed, the total number is lower in FY 2009 than FY 2008 when collections were $1.8793 billion.
Pendency and Backlog
On the patent pendency front, average time to first Office Action increased from 25.6 months to 25.8 months, and total pendency increased from 32.2 months to 34.6 months. Not surprisingly, the PTO met its goals that it set for these actions of 27.5 and 37.9 months, respectively. The PTO always seems to set ridiculously easy goals for itself that it can easily meet. The increase in time to first action is fairly small at less than 1%, but the increase in total pendency is about 7.5%.
The PTO is obviously not making any progress toward P-PAC’s unrealistic goal of 24 month pendency by the end of FY 2010 or Commerce Secretary Locke’s goal of 10 months to first action and 20 months total pendency. And, as we know, the pendency numbers don’t take into account RCEs and continuation applications. The PTO counts these as new filings, significantly reducing their numbers. In its annual report, P-PAC recommends changing the pendency definition to track from an application’s actual first filing to its final disposal, i.e., final issuance or abandonment including RCEs and continuations.
Regarding its backlog, the PTO notes a slight decrease in the backlog of unexamined applications. At the end of FY 2009, there are 1,207,794 applications pending, down from 1,208,076 at the end of FY 2008, a negligible decrease. There are now 735,961 applications awaiting examiner action, down more significantly from 771,529, a decrease of 4.6%. The decrease in numbers is due to the fact that the PTO disposed of 487,140 patent applications, an increase of about 23% from FY 2008! How it accomplished this is a bit of a mystery given the numbers on examiners.
The report laments the hiring freeze and reduction in examiner overtime as part of the cause for the increase in pendency. While the examining corps numbered 6,099 at the end of FY 2008, the PTO’s 2009 report puts the number at 6,243, for an increase of about 2.4%. In recent years, the size of the examining corps has increased by over 10% annually, usually 13-14%. The PTO’s goal is to have 8,400 examiners by 2014.
Application Filings and Maintenance Fees
The PTO only has preliminary data for FY 2009 patent filings, but estimates them to be at 485,500, a decrease of 2.3% from FY 2008. Trademark filings were down even more dramatically, dropping 12.3%. After a decrease last year, the PTO issued 190,121 patents in FY 2009, a 4% increase from FY 2008.
On the maintenance fee front, the PTO puts renewal rates for the 1st, 2nd, and 3rd maintenance fees at 80.3%, 63.5%, and 45.4% respectively, down from 83.1%, 73.7%, and 49.2% from FY 2008. This also contributed to the PTO’s budget shortfall.
The number of ex parte reexamination requests was down in FY 2009 to 658. The PTO granted 574 of 614 requests on which a determination was made in FY 2009, a grant rate of 93.5%, which is actually a bit of a decrease from the last couple of years.
The number of inter partes reexamination requests was up to 258 from 168, an increase of 53.6%. The PTO granted 218 of 229 requests on which a determination was made in FY 2009. The grant rate for inter partes reexaminations is 95.2%, which is fairly consistent with the yearly average.
Finally, the crisis at the Board of Appeals: at the end of FY 2008, 3,956 cases were pending. The Board decided 6,862 cases. Pretty good, right? Unfortunately, 15,483 new appeals were filed in FY 2009, leaving a new total of 12,577 cases pending. This backlog will have a significant effect on appeal pendency and whether applicants should even consider filing an appeal.
Of the decided cases, 3,574 (52.1%) were affirmed, 961 (14%) were affirmed-in-part and reversed-in-part, 1,732 (25.2%) were reversed, 131 (1.9%) were dismissed or withdrawn, and 464 (6.8%) were remanded to the examiner.