Archive for the ‘USPTO Developments’ Category

PTO Issues Final Rule to Implement Prioritized Examination Track (Track I)

Tuesday, April 5th, 2011

This just in from AIPLA:

The Patent and Trademark Office on April 4, 2011, issued a final rule to implement prioritized examination upon an applicant’s request and payment of a $4,000 request fee and other filing fees.  76 Fed. Reg. 18399.

Under a new 37 C.F.R. 1.102(e), prioritization is available only for an original and complete utility or plant nonprovisional application that contains or is amended to contain no more than four independent claims, no more than 30 total claims, and no multiple dependent claims.  The goal is to provide a final disposition within twelve months of an application’s receiving prioritized status.

The effective date of the new rule is May 4, 2011, and requests for prioritization may be submitted on or after that date. 

The Federal Register notice states that the Office is limiting requests to a maximum of 10,000 applications during the remainder of fiscal year 2011. The notice also states that the Office lacks statutory authority to extend the small entity fee to examination prioritization, but points out that such authority is contained in the patent reform legislation passed by the Senate (S. 23) and pending in the House (H.R. 1249).

To read the Federal Register notice, click here.

President’s Proposed Budget Calls for USPTO Staffing and Fee Increases, Pendency Reduction

Monday, February 14th, 2011

From Janal Kalis, Schwegman, Lundberg & Woessner, P.A.:

President Obama released his proposed budget for 2012. The new Budget would allow the USPTO “full access to its fee collections” and for a “temporary” but major fee surcharge. The proposed budget would include a 1.4% increase in fees based on the Consumer Price Index (CPI) increase and a 15% surcharge on patent fees. The projected collections for FY2012 would jump to $2.71 billion ($2,700,000,000.00), a 16% increase of FY2011 and a 34% increase of FY2010 spending.

The 2010-2012 increase works out to a little over $100,000 extra per examiner. Examiners should not, however, expect raises.

The increased budget is intended to help cut “the average overall processing time of a patent application from 35 months to 20 months by 2015” by hiring 1,500 new patent examiners and to implement a “much-needed 21st century information technology (IT) system” for the USPTO.

Director Kappos Posts Documents Summarizing Patent Prosecution Highway Programs and Three Track Examination Proposal

Tuesday, October 5th, 2010

Check out the following two documents for a summary of Patent Prosecution Highway programs and the Three Track Examination proposal.

Three Track Examination

Prosecution Highway Programs

Director Kappos to the Rescue as Well – USPTO Gets More Funding

Saturday, August 7th, 2010

As if Congress anticipated Judge Michel’s op ed piece about the need to increase USPTO funding, Director Kappos reports on his blog this week that legislation has been passed by both houses that increases the Fiscal Year 2010 spending authority for the USPTO by $129 million, and that the President is expected to sign the bill into law shortly. 

Director Kappos reports that this legislation will allow the USPTO to immediately take a number of actions that will benefit the entire IP community, including:  hiring additional patent examiners; funding full overtime for patent examiners and support staff; accelerating patent examination process reengineering; and continuing to fully fund PCT contract work.  Mission-critical IT projects to increase the effectiveness of every USPTO function will also be accelerated.

Congratulations to Director Kappos and the rest of the Government for this desperately needed funding.

Kudos to the USPTO for Publishing a Five Year Strategic Plan for Comment

Tuesday, July 27th, 2010

The USPTO Strategic Plan is now open for public comments.  I find it very refreshing that the USPTO is opening its planning process to the public.

The comment period runs to August 2, so get your comments in soon.  The plan can be found at  Comments can sent to

Commissioner Stoll on RCE’s and Encouraging USPTO Examination Statistics

Tuesday, July 27th, 2010

Commissioner Stoll recently posted to Director Kappos’ blog some facts about RCE Filings.  He reports, among other things, that the overall average RCE filing rates have not changed significantly in the last year and that some of the RCE information circulating publicly is incorrect.  Commissoner Stoll reports the latest figures for RCE filings: in FY 10, 114,183 RCE applications have been filed through July 12, 2010.  This represents 31.2% of total UPR (Utility, Plant, and Reissue application) filings.  Commissioner Stoll also notes that when compared with 110,183 filings over the same period in FY09 and 138,459 filings for all of FY09, it is apparent that the average RCE filing rate has remained fairly constant.

Commissioner Stoll’s post also notes some interesting progress in PTO productivity and indications that the examining corps is working more efficiently with practicioners.  This includes:

1) Actions per disposal are down substantially – from over 2.9 in FY 2008-2009 to currently under 2.4.  

2) Productivity in July is up by 3.5 percent over the same time last year–386,147 total PUs (production units*) versus 373,170 PUs.  

3) Allowances have increased from 136,228 last year at this time to 178,322 this year. 

4) Final rejections are up too, with 203,206 final rejections so far this year, compared to 189,202 for the same period in FY09.  

5) Interviews, too, are projected to increase by about 60 percent from last year.  

This is very good news.  Commissioner Stolls blog posting is well worth reading in full as it contains a number of other excellent statistics and observations.


Tuesday, July 27th, 2010

The USPTO has published its new guidance on patent eligibility in light of the US Supreme Court’s Bilski decision.  The interim guidelines are found in a notice in the Federal Register titled “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos.”  Public comments are invited by September 27.  I will post comments on these new interim guidelines soon.

USPTO Interim Guidelines for Patent Eligibility

Director Kappos: Ten Tips for Streamlining Patent Prosecution

Thursday, July 8th, 2010

This posting is from Director Kappos’ blog on June 28.  The tips offered are excellent and I agree with them all 100%.   A set of clear, compact and targeted (not overly broad) claims makes for much greater efficiency for both examiners and attorneys.  Here is the posting:

Ten Tips for Streamlining Patent Prosecution

I wanted to follow up on one of my blog postings from a few months ago about ways applicants and examiners can streamline the patent prosecution process.  The blog posting contained a “Top 5” list that appeared in IPLaw 360 in an article entitled “Five Things Patent Examiners Wished You Would Do.”   The article was based on an interview with three Supervisory Patent Examiners (SPEs): David Ometz, John Cottingham and Andrew Koenig. 

At the end of my posting I invited comments from our examining corps about expanding this “Top 5” list to a “Top 10” list of tips for improving patent prosecution.  There were dozens of comments and suggestions offered, and we have consolidated these comments into a “Top 10” list that I want to share with you.  Obviously, some of the items that appeared in the “Top 5” list are included in the new list, but thanks to many fine comments, the original “Top 5” have been refined and 5 more have been added.  Here is the list: 

1) CONDUCT INTERVIEWS:  Set up interviews when possible. Interviews can help applicants and examiners quickly identify points of agreement as well as points of disagreement.  An interview will help advance prosecution and provide an opportunity to facilitate a possible early allowance. 

2) KEEP CLAIMS MANAGEABLE:  Avoid filing excessive numbers of claims. Filing a manageable number of claims will enable the examiner to enhance prosecution by directing examination efforts at the heart of applicants’ invention. 

3) PROVIDE GOOD TRANSLATIONS:  Do a careful job of translating foreign-language applications into English before filing an application in the United States.  Poorly translated applications often result in undesirable lengthy prosecution resulting from lack of clarity arising from indefinite claim language or unclear wording in the specification. 

4) CLEARLY IDENTIFY NEW LIMITATIONS:  When adding new limitations to claims during prosecution, include a brief section in the remarks citing the location in the specification or drawings that provides support. This will eliminate unwarranted new matter rejections under Section 112 and assist the examiner in better understanding the meaning of the claims.  

5) FILE THOROUGH RESPONSES:  Take care to ensure that your response addresses the specific issues set forth in the examiner’s office action. Responses or amendments that fail to address the issues in the office action unduly extend prosecution. 

6) ADVANCE AMENDMENTS/ARGUMENTS EARLY:  File arguments and amendments at the earliest stage of prosecution, and prior to a final rejection if at all possible.  Amendments submitted after final are more difficult to deal with procedurally, are not automatically entered, and extend prosecution. 

7) COORDINATE US/FOREIGN APPLICATIONS:  Draft or amend your U.S. application in view of the prosecution in a corresponding foreign or international application.  Success of the Patent Prosecution Highway (PPH) shows that applications drafted or amended in response to search reports and patentability opinions in corresponding foreign or international applications have a much higher allowance rate and shorter prosecution.  

8)  DRAFT CLAIMS TOWARD THE INVENTION: Know what you want to protect before you file the application and draft the claims toward the invention.  If the claim set is not initially drafted to capture the protection needed or desired by the applicant, the examiner will have difficulty doing a comprehensive search on first action.  Furthermore, the examiner will have difficulty anticipating what might be claimed in the future, if the initial claim set is misdirected or overly broad. All of this extends prosecution at everyone’s expense.    

9)  KEEP INFORMATION DISCLOSURE STATEMENTS MATERIAL:  Submit a focused Information Disclosure Statement (IDS).  Include in an IDS only those references material to patentability.  The citation of references that are not material to patentability does not promote a focused examination.  Also, be careful to avoid the repeated citation of the same reference. 

10)  DRAFT CLAIM SET FROM BROAD TO NARROW:  Draft your claim set beginning with the broadest scope to which you feel you are entitled and concluding with the narrowest scope you feel merits protection.  A claim set that is graduated in scope from broad to narrow assists the examiner in performing a complete and focused search on first action and can help the examiner anticipate future amendments.  A claim set that is merely broad does not assist the examiner in performing a focused search and often leaves the examiner guessing as to what might be claimed after first action.  This can lead to piecemeal prosecution and the citation of new art after amendment. 

Applicants and examiners both must be committed to compact prosecution in order to achieve the efficiency we all seek.  The tips above can assist practitioners and examiners in achieving an early resolution of rights in patent applications and ultimately expedite the issuance of a patent. 

Thanks to all who submitted comments which led to the creation of this “Top 10” list.  As always, I welcome your comments.

Recent Pendency Statistics for USPTO Tech Centers 2100, 2400, 2600, 2800 and 3600

Sunday, June 20th, 2010

The following statistics were provided by the USPTO to the AIPLA Electronics and Software Patent Committee, and may be available elsewhere.  Much thanks to the USPTO for providing these statistics.  The stats show a very modest increase or small decrease in the number of cases pending in April 2010 compared to September 2009.  It would appear that either the PTO or the economy has for now stopped or greatly reduced the growth of backlog in the PTO.  Let’s hope the PTO can get the funding it needs to continue to implement the improvements in technology and training being sought by Director Kappos.

Technology Center pendency statistics:

 Technology Center 2100 

Average pendency to first action                      32 months

Average total pendency                                   41.3 months

Number of pending cases as of 04.30.10          61,024

Number of pending cases as of 09.30.09          60,882

Staffing – 639 examiners, 47 supervisors

Technology Center 2400

Average pendency to first action                      29 months

Average total pendency                                  43.9 months

Number of pending cases as of 04.30.10          44,037

Number of pending cases as of 09.30.09         39,669

Staffing – 688 examiners, 56 supervisors

Technology Center 2600

Average pendency to first action                     33 months

Average total pendency                                  42.7 months

Number of pending cases as of 04.30.10         121,836

Number of pending cases as of 09.30.09         127,956

Staffing – 785 examiners, 70 supervisors

Technology Center 2800

Average pendency to first action                     22.3 months

Average total pendency                                  30.6 months

Number of pending cases as of 04.30.10         123,012

Number of pending cases as of 09.30.09         123,122

Staffing – 1000 examiners, 75 supervisors

Technology Center 3600

Average pendency to first action                     26.9 months

Average total pendency                                  35.1 months

Number of pending cases as of 04.30.10         84,442

Number of pending cases as of 09.30.09         83,535

Staffing – 639 examiners, 47 Supervisors

 Overall, filings are flat for FY10

Kappos: US Economic Security Depends on National IP Strategy

Friday, June 4th, 2010

Isn’t it refreshing when someone in a leadership position in our Government actually acknowledges for a change that intellectual property protection is important to American business, and even our national securityFor an inspiring read (assuming you aren’t currently being sued by an NPE) visit this link on IP Watchdog, which posted a report on David Kappos’ speach to the Center for American Progress on June 2:

My thanks to Gene Quinn for his reporting on the speech.