Looking Back to Move Forward: The USPTO’s New Policy Initiative
Earlier this year, the United States Patent and Trademark Office announced an initiative to enhance the quality of patents. This new initiative comes on the heels of previous quality initiatives and the patent office’s efforts to reduce the unexamined application backlog from more than 764,000 unexamined applications in January 2009 to its present level of 566,100 applications. This drop in the application backlog has helped reduce the total pendency from filing of a patent application to a disposition from about 34.5 months in August 2010 to its current level of 26.7 months. These long waiting periods cause entrepreneurs and start-ups to lose value as they must sometimes wait for a patent to issue before investors are willing to place their money in the new company, as well as causing issues for others.
The current patent quality initiative has three main pillars: excellence in work products, excellence in measuring patent quality, and excellence in customer service. While speaking with a supervisory patent examiner at the patent office, he said that these pillars essentially boil down to ensuring that initial office action is very complete and that the applicant’s reply to the office action is very complete. These components will lead to many patent applications being resolved on the second office action and will help ensure that a higher percent of patents issued are high quality.
However, this is not the first time that we have seen the Patent Office attempt to increase the quality and speed of the patent application process. Fifty-three years ago in 1962, the Patent Office faced a mounting problem of long delays and a mounting application backlog. In response, the Commissioner of Patents David Ladd and the Superintendent of the Examining Corps Harold Whitmore developed and implemented a policy at the Patent Office called compact prosecution. Like today, this policy focused on an initial office action that was as complete as possible. This office action would provide applicants full knowledge of where the office stood on the patentability of the invention. This complete first office action would then be followed by a complete response by the applicant that would ensure that all concerns raised by the patent office were addressed to increase the likelihood that the second office action would also be the final office action.
Compact prosecution became the modus operandi of the Patent Office; however, the amount of innovations and applications filed increased at a rate that the Patent Office could not keep up with under this system. Furthermore, this compact prosecution system caused applicants to re-file their applications using Requests for Continued Examination (RCEs) because they felt they did not get the chance to respond to Final Office Actions. This system just led to a shift from a backlog of unexamined applications to a backlog of RCEs that need to be examined.
This begs the question of why a re-affirmation of compact prosecution 53 years after its creation would suddenly serve to increase the quality of service at the Patent Office. The short answer is that the quality will not change as long as the same examination procedures are used and so long as applications keep coming in at the current pace. However, the Supervisory Patent Examiner whom I spoke with believes there is a way for quality and efficiency to improve under the current system. He believes this improvement will need to come from the applicants themselves when they file their application. He thinks the Patent Office should focus on the application’s disclosure requirement and urge applicants to file the most complete, exact initial application possible. Theoretically, if the applicants describe their inventions exactly, the examiner will be able to easily tell if the device has been patented previously and will deal with the application quickly. However, applicants have an incentive to try to patent as broad an invention as possible to increase the value of a potential patent, so the practice of being as exact as possible in the application may not appeal to applicants as much as the Patent Office would hope.
The Patent Office may have a hard time convincing applicants to be exact in their applications. Even if applicants are exact, it remains to be seen if that will help to decrease the backlog or if applicants will just re-file their applications as an RCE. However, with talk that the quality of patents has decreased in recent years, it is imperative that the Patent Office finds new ways to improve. Re-affirming a policy that has been around for half a century may not seem like the best approach. But if the Office can convince applicants to help in the prosecution process, it will increase efficiency and improve quality, which is exactly what the Patent Office needs.
Christopher Pearson is a J.D. candidate, ’17, at the NYU School of Law.