State of Innovation

Patents and Innovation Economics

Three Steps to Reduce Patent Pendency Times

President Obama has prioritized reducing patent application pendency times.  What are your top three suggestions to achieve this goal?  Here are my mine.

One: Change the way examiners are evaluated.  According to my understanding, productivity count or points are a major part of an examiner’s performance review.  The examiner gains points for reviewing a new case, when an applicant files a RCE (Request for Continued Examination) and if the case is allowed or abandoned, among other activities.  This system encourages “churning” where an examiner will force the applicant to file a RCE in order to obtain an allowance to increase their points.

My suggestions are a productivity scoring system that discourages churning and a 360 degree review that includes the opinions of attorneys and applicants that work with the examiner.  The scoring system should be reworked to value quick disposal of cases.  This would mean eliminating the counts for RCEs and perhaps include a count related to how fast a case was resolved.

Two: The USPTO is located in Arlington Virginia, next to Washington D.C., where the cost of living is expensive and the 9000 government employees have little significance to the state of Virginia.  By having USPTO west in Denver, Portland, Seattle, Austin, Minneapolis, etc. or some combination thereof, examiner retention rates are likely to significantly increase, since the cost of living is lower.  The pool of qualified, English speaking applicants for patent examiners would increase, since the USPTO has admitted they have a hard time keeping examiners who are not from the northeast.

The USPTO mission is about promoting technology and it makes sense that the USPTO should be located near the centers of technology, not the center of political power.  By having the USPTO near great centers of innovation, examiners are more likely to have a better understanding of the underlying technologies they examine.  Locating the USPTO in multiple congressional districts increases the likelihood it will remain fully funded.

According to Brian Lucas , a Patent Attorney in the U.K.:

The UK Patent Office was moved from central London to Wales (which, as far as I was concerned) was in the middle of nowhere.

At the time, I thought this was a terrible decision but I now realize that it was one of the best administrative decisions I have seen.

In particular the Central London Patent Office was facing staffing difficulties and I frequently had dealings with temporary staff who had little or no experience of the patent system and who were rarely able to help me. Once the Patent Office moved to Wales I rapidly found that I was dealing with a stable group of highly experienced, extremely knowledgeable and very friendly people who are an absolute pleasure to work with.

We, in the UK, are truly blessed to have such a group of people to work with.

Three: Ensure that quality reviews are balanced and include speedy resolution of cases as part of the definition of quality.  The second pair of eyes process is probably the single biggest factor in the longer pendency times in the last decade.  As an examiner comment on a blog stated, it was easier under the Dudas directorship to reject an applicantion than risk a quality review error.  The examiner notes quality reviews only occurred when they generated an allowance.  Clearly, this system was designed to discourage allowances and increase pendency times.

How would you reduce pendency times?

July 10, 2009 - Posted by dbhalling | -Philosophy, -Prosecution, Patents | , , , , , | No Comments Yet

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