Archive for the ‘US Patent & Trademark Office’ Category

PTO Guidance After Alice

June 30, 2014

Last week, the USPTO provided the patent examining corps with Preliminary Examination Instructions in light of the Supreme Court’s opinion in Alice Corp.  The memo indicates that the Supreme Court has extended the framework set forth in Prometheus to all claims directed to laws of nature, natural phenomena, and abstract ideas.  Previously, the PTO had only applied Prometheus to laws of nature.

The instructions advocate a two part analysis with respect to abstract ideas.  First, determine whether the claim is directed to an abstract idea.  The instructions do not provide any guidance on how to determine whether the claim is directed to an abstract idea.  This is not surprising because the Supreme Court’s opinions have not provided such guidance either.  I guess you’re supposed to know it when you see it.

If the claim is directed to an abstract idea, the analysis should proceed to step two.

If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. In other words, are there other limitations in the claim that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea? Consider the claim as a whole by considering all claim elements, both individually and in combination.

The instructions then refer to certain types of limitations that may qualify the claims as including “significantly more” than the mere abstract idea.  The examples include improvements to another technology or technological field, improvements to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

The instructions also refer to the example of the claims in Alice Corp. as claims that did not include the required “significantly more” limitations to an abstract idea, such as the programming of a general computer to perform the abstract idea.

The Supreme Court’s “you’ll know it when you see it” type of analysis makes it very difficult for inventors, patent applicants, and patent attorneys to have any type of certainty as to whether an invention or the claims to an invention will pass the Supreme Court’s muster.

The attack on patents continues . . .

F2014 Halfway Numbers

April 28, 2014

The following is a comparison of the PTO’s numbers from March 2014 with December 2013 (at my last numbers update).  Time to refer again to the PTO’s Data Visualization Center to see how things are going.

First Action Pendency – 18.6 Months

In December, first action pendency was 17.4 months.  This is the first rise we’ve seen in this number in quite some time.  The PTO was doing a nice job with first action pendency, but the number is now the highest it has been since last April.

“Traditional” Total Pendency – 27.8 Months

Traditional pendency is down from 28.6 months in December and over 35 months at the beginning of FY2011.  This number continues to drop, as the PTO shows progress here.

Application Pendency with RCEs – 37.8 Months

This number is up slightly from 37.6 months in December, but is down from 39.4 months at the end of FY2012.  Overall, the number is not up significantly, but also reverses the trend of decreasing pendency numbers.

Applications Awaiting First Office Action – 616,021

This number is up from 595,361 in December and 584,998 in September.  The backlog is at the highest level since August 2012, a 3.5% increase during the quarter and a 5.3% increase during the fiscal year.

Patent Application Allowance Rate – 51.3%, 70.0%

The first number counts RCE filings as abandonments, while the second number does not, but counts them as continuing prosecution.  These numbers are up slightly from 51.0% and 69.6%, respectively, in December.  The 18.5+% difference between the two numbers is, however, troubling.  It seems that RCEs are still being forced; especially considering the next number.

RCE Backlog – 74,310

This number is down from 79,120 in December, a 6% reduction.  Continuing progress in this matter is necessary to increase prosecution efficiency.  The After Final Pilot Program is supposed to prevent examiners from churning RCE filings.

Number of Patent Examiners – 8,041

This number is up from 8,013 in December.  In November, the PTO passed 8,000 examiners for the first time ever.  Although improving examiner efficiency is a solid goal, as long as filings continue to increase, so should the number of examiners.

Pendency from Application Filing to Board Decision – 86.1 Months

The crisis at the Board continues, although pendency is inching slowing downward from 87.3 months in December.  It is now at its lowest level since FY2012.   Pendencies of over 7  years from filing to Board decision are not acceptable.  New technologies become obsolete prior to getting a patent or decision by the Board.  The PTO hired a number of additional patent judges and attorneys to deal with this issue, but the sharp increase in the number of appeals filed has made tackling this an impossibility.   The Board now has significantly greater responsibilities with the beginning of the new post-grant review proceedings.

The Patent Trial and Appeal Board has not updated is typical production report since November.  Thus, the information below is a bit different that I’ve reported in the past.  It now comes from a PTAB Dashboard.

At the end of March, the Board had 25,664 pending appeals from ex parte application prosecution, up from 25,151 (2%) in November.  14,165 of the appeals have been pending for at least 14 months.

Due to the failure to update the data, it is difficult to know how the PTAB is doing on other types of appeals or cases or how many are being filed.

Conclusion

The PTO is doing a good job on the front end.  There appears to be some stagnation on the progress the PTO was previously making during examination.  Other problems begin once an application reaches a final office action.  RCE filings seem to be dropping somewhat, but the rate is still pretty high.  Many or most of these are the result of examiners forcing them on applicants.  This is very inefficient and increases application cost and pendency significantly.

The PTO has still not come up with a plan to deal with its crisis at the Board.  By not updating performance data, it appears that the PTO is trying to hide this information from applications.  Applicants deserve the ability to get a final agency decision on a patent application within a reasonable time frame.  The Board’s added workload with numerous types of proceedings for it to decide has made things more congested.  Presumably, if the proceedings work well, there may be many more filed in the coming months and years.  This could make things even worse.  Appeals must be decided more quickly.

PTO Issues Guidance on Patentable Subject Matter

March 17, 2014

Several weeks ago, Andrew Hirschfeld, Deputy Commissioner for Patent Examination Policy, issued a Procedure for Subject Matter Eligibility Analysis for claims purportedly involving laws of nature, natural principles, natural phenomena, or natural products.

At its most basic, the guidelines direct patent examiners to determine whether the claims fit within one of the statutory (always a good place to start) categories (process, machine, manufacture, composition of matter).  If so, the examiner should determine whether it might fit within one of the judicially-created exceptions to eligibility.  Next, the examiner should ask this question.

Does the claim as a whole recite something significantly different than the judicial exception(s)?

What does that mean?  There is, of course, not test to determine whether a patent claim recites something “significantly different” from a patent ineligible naturally occurring product.  Thus, the guidelines set forth a large number of factors that examiners must weigh to make this determination.  The guidelines then go on for a total of 18 pages to discuss factors weighing in favor or against the subject matter being patent eligible and set forth numerous examples for examiners to review.

Looking for “significant differences” again sounds like a confusion of the standard for prior art patentability against subject matter eligibility.  The Supreme Court has made this area of patent law that was simple to understand and basically dormant into an area that is beyond confusing and creates large amounts of uncertainty for applicants and patent owners.

How does one provide comments on these new PTO guidelines to perhaps assist the examiners with new tests or examples?  We can’t.  There is no comment period at all for these guidelines as they are not deemed to be rules that require a notice and comment period.  Let’s not revert to a closed Patent Office as during previous administrations.

PTO Seeks to Require Identification of Attributable Owner

February 6, 2014

The PTO has published an extensive proposed rule to require patent and patent applications to identify the “attributable owner.”  The PTO asserts that the public should be able to identify the true owner of a patent, many patent owners–including the infamous and scary patent assertion entities–are seeking to hide the identity of the true owner.  Therefore, the PTO is seeking to require the true owner to be identified.

As noted in the summary by Patently-O, however, this is not nearly so simple as it sounds.  Many patent owners have complex corporate structures that include parent companies, partially or wholly-owned subsidiaries, and multiple entities at various levels.  Property ownership is generally governed by state law with some patent ownership rules governed by federal law, not to mention foreign entities whose existence is governed by the laws of its country of origin.  Thus, there is a veritable panoply of entities that may be involved in patent ownership.

And, beyond that, property rights can be divided in a number of ways.  There are actual title-holders, such as assignees; there are licensees who may have some rights to the property and not others; there are parties that have equitable interests in property; there are easement-holders.

To cover the myriad of possibilities, the PTO seeks the identity of the “attributable owner.”  This means that the actual titleholder or assignee must be identified.  Certainly this would include the ultimate parent entity of the titleholder as well.  Any other parties that are necessary for enforcement of the rights in that patent need to be identified.  This would include exclusive licensees and other parties that would be necessary for enforcement.  Finally, the PTO seeks information on entities that temporarily divest or prevent vestment of ownership or other rights in the patent.  This would include trusts, proxies, and similar entities.  These seem to be some of the entities that the PTO considers to be used to hide the true identity of real parties in interest.

Proposed Rules

The proposed rules would require that the attributable owner be identified at the time of filing a patent application, when there is a change in the attributable owner during pendency of the application, at the time of payment of the issue fee or any maintenance fees, and when a patent is involved in any type of post grant review, including ex parte reexamination, supplemental examination, or proceedings before the Patent Trial and Appeal Board.

Applicants and patent owners will generally be given three months from the date of these events to provide the PTO with this information.  If the applicant or patent owner fails to do so, the patent or application will be deemed abandoned.

The PTO is also seeking information from patent applicants and owners regarding licensing information and offers.  The PTO would like to make this information available to the public in an online format.  It is assumed that this information would be provided voluntarily.

Given the complexity of property ownership, the proposed rules are quite extensive.  The PTO seeks comments on the rules by March 25.

HT:  Patently-O and Hal Wegner.

First Quarter FY2014 PTO Numbers

January 21, 2014

The following is a comparison of the PTO’s numbers from December 2013 with September 2013 (at my last numbers update).  Time to refer again to the PTO’s Data Visualization Center to see how things are going.

First Action Pendency – 17.4 Months

At the end of FY2013, first action pendency was 18.2 months, and has been steadily dropping during the last two fiscal years.  That number is a significant improvement. The PTO continues to make significant improvements in this area.

“Traditional” Total Pendency – 28.6 Months

Traditional pendency is down from 29.1 months in September and over 35 months at the beginning of FY2011.  Again, the PTO is making significant progress in this area.

Application Pendency with RCEs – 37.6 Months

This number is up from 37.1 months in September, but is down from 39.4 months at the end of FY2012.  While the PTO is making significant progress on the front end with reducing first action pendency, the back end of applications requiring RCEs or appeals seems to be where the problem is being shifted.

Applications Awaiting First Office Action – 595,361

This number is up from 584,998 in September.  The PTO generally makes a big push to reduce this number at the end of each fiscal year and since then it has risen 1.8%.  It is a good reduction from 608,283 at the end of FY2012.

Patent Application Allowance Rate – 51.0%, 69.6%

The first number counts RCE filings as abandonments, while the second number does not, but counts them as continuing prosecution.  These numbers are down from 53.5% and 70.7%, respectively, in September.  The 18.5+% difference between the two numbers is, however, troubling.  It seems that RCEs are still being forced; especially considering the next number.

RCE Backlog – 79,120

This number is up from 78,282 at the end of FY2013, a relatively modest 1% increase.  Believe it or not, at the end of June, it was at 100,403.  Hopefully, progress in this area is not being stalled as it needs to continue.  The After Final Pilot Program is supposed to prevent examiners from churning RCE filings.

Number of Patent Examiners – 8,013

This number is up from 7,931 in September.  In November, the PTO passed 8,000 examiners for the first time ever.  Although improving examiner efficiency is a solid goal, as long as filings continue to increase, so should the number of examiners.

Pendency from Application Filing to Board Decision – 87.3 Months

The crisis at the Board continues, as the pendency is down from 88.5 months in September, but is merely back to June levels.   Pendencies of over 7  years from filing to Board decision are not acceptable.  New technologies become obsolete prior to getting a patent or decision by the Board.  The PTO hired a number of additional patent judges and attorneys to deal with this issue, but the sharp increase in the number of appeals filed has made tackling this an impossibility.   The Board now has significantly greater responsibilities with the beginning of the new post-grant review proceedings.

At the end of November (the Board doesn’t have its December numbers available yet), the Board had 25,151 pending appeals from ex parte application prosecution, a drop of 546 since August.  1,423 new appeals were filed since September (a pace for 8,538).  This is down significantly from the 10,758 in FY2013 and from FY2012 when 12,433 new appeals were filed.  Meanwhile, the Board disposed of 1,580 cases during FY2014 (a pace for 9,480).  This is down significantly from the 11,934 during FY2013.  They’re keeping pace here, but having a hard time denting the backlog.

In other types of cases, 166 inter partes review cases have been filed, 50 trials instituted and 23 concluded.  599 of these cases remain pending.  37 transitional business method cases were filed with 6 trials instituted.  1 of these have been concluded.  No post grant review petitions were filed in October or November.  3 derivation petitions were filed in November, giving the Board 4 such pending cases.  7 new interferences were declared, with 11 concluded, leaving the Board with 47 still to be decided.  3 new ex parte reexamination appeals were filed, with 14 being disposed.  13 such cases remain pending.  32 inter partes reexaminations have been filed.  The Board has decided 33, leaving an inventory of 104 cases pending.

Conclusion

The PTO is doing a good job on the front end.  Significant progress is being made on first office action pendency.  The problems begin, however, once an application reaches a final office action.  RCE filings seem to be dropping somewhat, but the rate is still pretty high.  Many or most of these are the result of examiners forcing them on applicants.  This is very inefficient and increases application cost and pendency significantly.

The PTO has still not come up with a plan to deal with its crisis at the Board.  Applicants deserve the ability to get a final agency decision on a patent application within a reasonable time frame.  The Board’s added workload with numerous types of proceedings for it to decide has made things more congested.  Presumably, if the proceedings work well, there may be many more filed in the coming months and years.  This could make things even worse.  Appeals must be decided more quickly.

USPTO Reduces Patent-Related Fees

January 9, 2014

On January 1, the USPTO reduced or eliminated several of the fees it charges patent applicants.  This is fairly unusual in recent years, as most fees have only gone up.  There was discussion that when the PTO started setting its own fees that it would make them more commensurate with the scope of work involved.  In that regard, these reductions make sense.

The PTO eliminated the Publication Fee that was charged to applicants when they paid the Issue Fee.  The Issue Fee itself was reduced from $1,780 to $960.  There is some cost to the PTO with issuing the patent, but the new fees are more in line with the actual costs.  In effect, the fees due upon receiving a Notice of Allowance were reduced by about 54% ($2,080 to $960).  The Issue Fee is subject to discounts for small and micro entities of 50% and 75%, respectively.

The PTO also eliminated the $40 fee for assignment recordation, provided the assignment is recorded electronically.  This has been standard practice for patent practitioners for a number of years, so this will be a savings for virtually all applicants.

Finally, fees charged under the Patent Cooperation Treaty (PCT) are now subject to discounts for small and micro entity status.  Previously, all applicants paid the same fees for PCT filings.

Who is in Charge of the PTO?

December 16, 2013

The short answer to this question is “nobody.”  The long answer is, well, a bit longer.

Last November, David Kappos announced his resignation as PTO Director, effective in January.  At the time, there was also a vacancy at the Secretary of Commerce, so it was understood that once that position was filled, President Obama would nominate a new Director of the PTO who is also the Undersecretary of Commerce.

In the meantime, Deputy Director Teresa Stanek Rea was to be the Acting Director of the PTO.

In May, Penny Prizker was nominated as Secretary of Commerce.  She was easily confirmed.

We next expected a new PTO Director nomination.  And we waited . . .

Deputy Director Rea next left the PTO in November.  And we still waited for a new Director to be nominated.

MLee-uspto-635Last week, Secretary Pritzker appointted Michelle Lee to replace Teresa Stanek Rea as the new Deputy Director of the PTO, effective January 13.  Lee was the Director of the PTO’s new Silicon Valley satellite office.  Lee had previously spent a number of years as the Deputy General Counsel at Google where she was the Head of Patents and Patent Strategy.  She had also been a partner at the law firm of Fenwick & West.

Because the position of PTO Director remains vacant, Deputy Director Lee would automatically assume the position of Acting Director of the PTO.

Or will she?

There has been some discussion on the proper procedure for appointing PTO leadership.  A new PTO Director must be nominated by the President with the advice and consent of the Senate.  A Deputy Director may be appointed by the Secretary of Commerce, upon nomination by the Director.  This would mean that Secretary Pritzker could only appoint Michelle Lee as Deputy Director if nominated by the Director.  In the absence of a Director, this appointment would appear to be invalid.

Is President Obama seeking to bypass the Senate confirmation process for a new PTO Director?  If so, why?  Politics is always in play on the Hill, but a new PTO Director is rarely controversial.

According to Patently-O, the PTO has defended the appointment by suggesting the Lee was nominated by Commissioner for Patents Peggy Focarino, to whom the leadership duties at the PTO had been delegated.  The statute does not, of course, suggest that the Director’s nominating power can be delegated.  It actually puts Focarino in the strange position of nominating her boss.

Unfortunately for the PTO and President Obama, there is simply no statutory authority for the Commissioner for Patents to make such a nomination.  Therefore, the appointment of Michelle Lee as Deputy PTO Director is a legal nullity.

Apparently, President Obama does not see the PTO as important enough to nominate a true Director and Undersecretary of Commerce.

HT:  Hal Wegner.

PTO Numbers – End of FY2013

October 15, 2013

The following is a comparison of the PTO’s numbers from September 2013 with June 2013 (at my last numbers update).  Time to refer again to the PTO’s Data Visualization Center to see how things are going.

First Action Pendency – 18.2 Months

At the end of June, first action pendency was 18.3 months, and was 21.9 months at the end of FY2012 (and 28 months at the end of FY2011).  That number is a significant improvement.  That’s a 16.9% drop in the during the fiscal year.  The PTO continues to make significant improvements in this area.

“Traditional” Total Pendency – 29.1 Months

Traditional pendency is down from 29.8 months in June and 32.4 months at the end of FY2012.  The number was over 35 months at the beginning of FY2011.  The 10.2% reduction during the year continues to demonstrate significant progress in this area.

Application Pendency with RCEs – 37.1 Months

This number is unchanged from June, but is down from 39.4 months at the end of FY2012.  This is progress, but the increasing number of RCE filings (and appeals) makes this number look better than it actually is.

Applications Awaiting First Office Action – 584,998

This number is down from 591,785 in June and represents a continued drop from 608,283 at the end of FY2012.  Even after the huge spike in new filings to beat the first-to-file transition, the PTO has worked to reduce this number.

Patent Application Allowance Rate – 53.5%, 70.7%

The first number counts RCE filings as abandonments, while the second number does not, but counts them as continuing prosecution.  These numbers are up from 52.1% and 69.4%, respectively, in June.  The 17+% difference between the two numbers is, however, troubling.  Especially considering the next number.

RCE Backlog – 78,272

Believe it or not, this number is really dropping.  At the end of June, it was at 100,403.  At the end of FY2012, the PTO reported 95,200 applications with RCE filings that awaited action; at the end of FY2011 that number had crept up to 63,487.  Progress is being made, and it needs to continue.  Perhaps the After Final Pilot Program is working as examiners churn fewer RCE filings?

Number of Patent Examiners – 7,931

Perhaps the PTO has overcome sequestration?  This number is up from 7,740 in June and is at its highest level ever.  How will the government shutdown affect this number?

Pendency from Application Filing to Board Decision – 88.5 Months

The crisis at the Board continues, as the pendency is up from 87.3 months in June.   We are now at over 7 1/3 years from filing to Board decision.  New technologies become obsolete prior to getting a patent or decision by the Board.  The PTO hired a number of additional patent judges and attorneys to deal with this issue, but the sharp increase in the number of appeals filed has made tackling this an impossibility.   The Board now has significantly greater responsibilities with the beginning of the new post-grant review proceedings.

At the end of August (the Board doesn’t have its September numbers available yet), the Board had 25,697 pending appeals from ex parte application prosecution, a drop of 322 since May.  9,980 new appeals were filed since September (a pace for 10,887).  This is down from FY2012 when 12,433 new appeals were filed.  Meanwhile, the Board disposed of 10,767 cases during FY2013 (a pace for 11,746).  They’re keeping pace here, but having a hard time denting the backlog.

In other types of cases, 458 inter partes review cases have been filed, 150 trials instituted and 37 concluded.  399 of these cases remain pending.  48 transitional business method cases were filed with 12 trials instituted.  3 of these have been concluded.  The first post grant review petition was filed in June and was disposed of without trial.  Similarly, the first derivation petition was filed in June with no decision yet.  43 new interferences were declared, with 49 concluded, leaving the Board with 47 still to be decided.  97 new ex parte reexamination appeals were filed, with 101 being disposed.  18 such cases remain pending.  202 inter partes reexaminations have been filed.  The Board has decided 151, leaving an inventory of 115 cases pending.

Conclusion

The PTO is doing a good job on the front end.  Significant progress is being made on first office action pendency.  The problems begin, however, once an application reaches a final office action.  RCE filings seem to be dropping somewhat, but the rate is still pretty high.  Many or most of these are the result of examiners forcing them on applicants.  This is very inefficient and increases application cost and pendency significantly.

The PTO has still not come up with a plan to deal with its crisis at the Board.  Applicants deserve the ability to get a final agency decision on a patent application within a reasonable time frame.  The Board’s added workload with numerous types of proceedings for it to decide has made things more congested.  Presumably, if the proceedings work well, there may be many more filed in the coming months and years.  This could make things even worse.  Appeals must be decided more quickly.

Patent News Update

September 27, 2013

There have been a number of patent-related news items making their rounds recently.

PTO to Stay Open in Event of Government Shut Down

Hal Wegner shared a memo from Acting PTO Director Teresa Rae to PTO employees that the agency will use its reserve funds to remain open for at least several weeks in the event of a government shut-down on Tuesday.

Dear Colleagues,

As you know, the Obama administration is working diligently with Congress to try to ensure that the federal government remains open and continues to do its work on behalf of the American people. However, I wanted to inform you that even in the event of a government shutdown on October 1, 2013, the United States Patent and Trademark Office will remain open, using prior year reserve fee collections to operate as usual for at least a few weeks. We continue to assess our fee collections compared to our operating requirements to determine how long we would be able to operate during a government shutdown; we will update you as more definitive information becomes available.

Because the USPTO maintains sufficient carryover funding from prior fiscal years, our agency can and will stay open for business for a period of time using these available reserves. During that time we will all continue to conduct our duties and serve our Nation, by processing the patent and trademark applications that drive our country’s innovative economy. Should we exhaust these reserve funds before the government shutdown comes to an end, USPTO would have to shut down at that time, although a very small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions.

I realize you likely have many more questions. As new information becomes available, we will inform you promptly and thoroughly. Your respective business unit managers will also be reaching out to you to provide further clarification, as needed.

I thank you for your hard work, and the continuing dedication you demonstrate to the American people.

Sincerely,

Terry Rea

Congress Continues to Seek More Patent Reform

Patently-O has provided analysis and review of a patent reform bill discussion draft introduced by House Judiciary Chair Bob Goodlatte (R-VA).  The purpose of the bill, according to Rep. Goodlatte is to end “[a]busive patent litigation” specifically by “patent trolls.”

The bill would repeal the right of a civil action against the PTO to obtain a patent, substantially narrow the estoppel provisions of post-grant review, require the PTO to construe patent claims as a court would during post-grant and inter partes proceedings, codify obviousness-type double patenting, expand the scope of covered business methods for review, eliminate patent term extension after the filing of an RCE, and overturn the Supreme Court decision that patent malpractice suits belong in state court.

Other provisions in Rep. Goodlatte’s bill are similar to other bills seeking to reduce patent litigation abuse and patent troll tactics.  The bill would raise patent infringement pleading requirements, require the award of attorneys’ fees to prevailing parties (and against all interested parties), limit discovery prior to a court’s claim construction ruling, require companies asserting patents to disclose all interested parties, require courts to stay infringement suits against customers until suits against manufacturers are resolved, and protect creditor-licensees from foreign bankruptcies by IP owners.

Supreme Court Patent Cases

The Supreme Court’s October 2013 Term begins Monday, October 7.  The Court is scheduled to hear oral arguments in Medtronic v. Boston Scientific Corp. on November 5.  The question that Court will consider in that case is whether a declaratory judgment plaintiff has the burden to prove non-infringement against a patent owner.  The Federal Circuit ruled that the DJ plaintiff does bear the burden of proof.

The Court is considering or will consider petitions in a number of other patent cases as well.

Akamai v. Limelight.  The Court issued a CVSG order in this case in June where it asked for the views of the Solicitor General as to whether it should hear this case.  Akamai concerns multi-party infringement where more than one party completes all of the steps required in a patent claim.  The issues relate to both direct infringement and indirect infringement (inducement or contributory infringement).

Alice v. CLS Bank.  An en banc Federal Circuit could not garner a majority to determine whether the computer-related claims in this case were patent eligible subject matter.  A plurality of the court affirmed the district court’s holding that they were not.

WildTangent v. Ultramercial.  The Federal Circuit has twice held that the internet monetization claims in this case do constitute patent eligible subject matter.  The Supreme Court had earlier asked the Federal Circuit to reconsider its opinion in light of the Mayo v. Prometheus decision.

PTO Numbers – June 2013

July 25, 2013

How has sequestration affected the PTO’s production?  It’s time to review PTO numbers again.

The following is a comparison of the PTO’s numbers from June 2013 with March 2013 (at my last numbers update).  Time to refer again to the PTO’s Data Visualization Center to see how things are going.

First Action Pendency – 18.3 Months

At the end of March, first action pendency was 19 months, and was 21.9 months at the end of FY2012.  That number is a significant improvement.  That’s a 16.4% drop in the during the fiscal year.  The PTO continues to make significant improvements in this area.

“Traditional” Total Pendency – 29.8 Months

Traditional pendency is down from 31.1 months in March and 32.4 months at the end of FY2013.  This is the first time in recent memory that traditional pendency is under 30 months.  The 8% reduction during the year continues to demonstrate significant progress in this area.

Application Pendency with RCEs – 37.1 Months

This number is down from 38 months in March and 39.4 months in September.  This is progress, but the increasing number of RCE filings (and appeals) makes this number look better than it actually is.

Applications Awaiting First Office Action – 591,785

This number is down from 607,482 in March and represents the lowest number in recent history.  Even after the huge spike in new filings to beat the first-to-file transition, the PTO has worked to reduce this number.

Patent Application Allowance Rate – 52.1%, 69.4%

The first number counts RCE filings as abandonments, while the second number does not, but counts them as continuing prosecution.  These numbers are up from 51.1% and 68.8%, respectively, in March.  The 17+% difference between the two numbers is, however, troubling.  Especially considering the next number.

RCE Backlog – 100,403

Believe it or not, this number is also finally declining.  At the end of march, it was at a near high of 111,274.  At the end of FY2012, however, the PTO reported 95,200 applications with RCE filings that awaited action; at the end of FY2011 that number had crept up to 63,487.  Some progress is being made, and it needs to continue.

Number of Patent Examiners – 7,740

Here’s where sequestration starts to take its toll.  This number is down from 7,842 in March.  The PTO is facing another budget crisis due to sequestration.  This number will probably continue to fall.

Pendency from Application Filing to Board Decision – 87.3 Months

The crisis at the Board continues, although the number is actually down from 87.9 months in March.   That’s only about an 18 day improvement of the course of 7+ years (2,657 days!).  New technologies become obsolete prior to getting a patent or decision by the Board.  The PTO hired a number of additional patent judges and attorneys to deal with this issue, but the sharp increase in the number of appeals filed has made tackling this an impossibility.   The Board now has significantly greater responsibilities with the beginning of the new post-grant review proceedings.

At the end of May, the Board had 26,019 pending appeals from ex parte application prosecution, a drop of 440 since March.  7,333 new appeals were filed since September (a pace for 11,000).  Meanwhile, the Board disposed of 7,798 cases during FY2013 (a pace for 11,697).  They’re keeping pace here, but having a hard time denting the backlog.

In other types of cases, 261 inter partes review cases have been filed, 86 trials instituted and 6 concluded.  28 transitional business method cases were filed with 12 trials instituted.  None of these has yet concluded.  31 new interferences were declared, with 36 concluded, leaving the Board with 48 still to be decided.  68 new ex parte reexamination cases were filed, with 76 being disposed.  14 such cases remain pending.  126 inter partes reexaminations have been filed.  The Board has decided 108, leaving an inventory of 82 cases pending.

Conclusion

The PTO is doing a good job on the front end.  Significant progress is being made on first office action pendency.  The problems begin, however, once an application reaches a final office action.  RCE filings are stabilizing, but at a very high rate.  Many or most of these are the result of examiners forcing them on applicants.  This is very inefficient and increases application cost and pendency significantly.

The PTO has still not come up with a plan to deal with its crisis at the Board.  Sequestration has really tied its hands.  Applicants deserve the ability to get a final agency decision on a patent application within a reasonable time frame.  The PTO was working hard to try to hire more judges and patent attorneys to work on this situation, but Congress added to its workload as well.


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