The Obama Administration has been trumpeting an unrealistic goal of 10 months to first Office Action and 20 months total pendency for patent applications. This would be the real total pendency of patent applications, not the PTO’s current pendency numbers that count RCE’s and continuing applications as abandonments. Several initiatives have been discussed, proposed, and implemented towards this goal. What is the status?
What Happened to Deferred Examination?
In February 2009, the PTO held a roundtable discussion to determine whether there was support for a system of deferred examination. The general sentiment at that meeting was in favor of such a system. The main holdup was to work on the details of implementation. The PTO even extended the comment period on deferred examination to May 23, 2009. Since then, there has been almost no discussion of the issue.
The purpose of deferred examination would be to reduce the PTO’s enormous backlog of unexamined applications by weeding out those that applicants choose not to have examined. This should also decrease the pendency of applications that applicants do want examined. The key to successful implementation of a deferred examination system is deferment of the fees for examination. Unless an applicant can save on fees, it will generally not defer examination of the application.
Deferred examination would almost certainly require a legislative change. Yet, the pending patent reform bills in Congress contain nothing on deferred examination.
Is Count Reform Working?
Since new PTO Director David Kappos took over leadership of the PTO, he has implemented changes to the examiner count system in an effort to keep examiners from “churning” RCEs. Examiners now get less production credit for RCEs and thus have less incentive to force them on applicants. The PTO announced that the changes to the system went into effect the week of February 18, 2010.
Estimates are that about 200,000 of the 460,000 applications filed during FY2009 were applications that were “refiled”, many as RCEs. These refilings thus account for nearly 43% of all applications filed.
In March, less than a month after implementation of the changes, Hal Wegner, a highly-respected patent commentator and patent attorney with Foley & Lardner, declared that “‘Count’ Reform Has Failed.” He noted that based on the PTO’s computer model on patent pendency, the PTO projects that RCE filings for FY2010 will drop only from 30% of all filings to 28% and that the drop will only reach 22% of filings by FY2014. During the same period, pendency will drop from 42.6 to 34.6 months, a drop of nearly 19%. This 8 month drop does seem rather significant.
Then, in April, Mr. Wegner published a paper entitled “Commerce Department Pronounces ‘Count Reform’ DOA.” He suggests that the Commerce Department White Paper supporting patent reform implicitly acknowledges this fact and “sub silentio rejects further count reform as a solution” to the backlog. He goes on to say that the PTO has “candidly admitted” the failure of count reform through the projections of only a slight decrease in RCE filings as cited in his March 2010 report. Finally, he suggests that the Commerce Department paper argues to abandon count reform and simply hire more examiners.
I agree with Mr. Wegner that count reform, especially in its current diluted form, is not a complete solution to the pendency and backlog problem and will not eliminate RCE “churning.” With all due respect, however, I think it’s a bit too early in less than a month after implementing the change to call it a complete failure. I agree that the Commerce Department paper was simply a political tool to get Congress to pass patent reform and does not address other proposed solutions to the PTO’s problems; but I don’t see any admission or acknowledgment from the PTO or the Commerce Department that count reform has failed. Let’s give it some time and possibly take it further before we give it up for dead. And, we should remember that some RCEs are warranted in certain circumstances.
Would Worksharing Help?
Director Kappos has been pushing hard for patent worksharing with other leading patent offices such as Europe, Japan, Korea, and China. This is a form of deferred examination where the application will be examined first in the country where the application is originally filed, usually the applicant’s home country. Examination would be accelerated in that country; only once the original examination is complete would the application be examined in other countries. Those countries would benefit from the original examination in that the claims and arguments could be tailored with respect to the original examination, thus resulting in more efficient subsequent examinations.
Currently, because the US does not have deferred examination as many other countries do, the US PTO tends to do the lion’s share of original examinations. This at least partially explains the extreme backlog of applications at the US PTO.
Although it appears to have been removed in the Manager’s Amendment, S. 515 as introduced stated that “search and examination functions are sovereign functions to be performed by US citizens who are employees of the US government.” This provision would make patent worksharing very difficult.
Many initiatives and changes at the PTO could work together to reduce patent pendency to more reasonable levels. It is probably impossible to cut total pendency to 20 months (and many applicants would not want this), but cutting it from its present levels of over 4 years can certainly be achieved.