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BIO 2014

USPTO official discusses alleviating patent backlog

Michelle Lee
Photo by U.S. Patent and Trademark Office

The U.S. Patent and Trademark Office has taken some heat over its backlog, and even more criticism after coming out with examiner guidelines reflecting the Myriad and Mayo Supreme Court rulings without first seeking public comment.

In comments Wednesday at the BIO 2014 International Convention, Michelle Lee, deputy undersecretary for intellectual property and deputy director of the patent office, outlined reasons for the backlog and steps the agency is taking to alleviate it.

This is what the patent office must deal with: Since 2009, more than 31,000 patents have been granted in molecular biology and microbiology, about 30,000 patents in the drug, bio-affecting and body-treating classifications, and more than 16,000 patents for medical devices, a 157 percent increase in just five years.

“All of which indicates that an inspiring can-do spirit is alive and well today in the biotech fields,” Lee said.

The patent office saw a 6.2 percent increase in applications in fiscal year 2013 over the previous year. However, even with the increase, Lee said the agency was able to reduce the backlog by 4 percent.

“We had a 6.3 percent increase in filings, and a 4 percent reduction overall — and that’s thanks to our expanding examination core and a number of integral improvements to our IT systems and our processes.”

One of the contributing factors to the patent office’s overwhelming number of applications was implementation of the Cooperative Patent Classifications system. The 100 million document joint patent classification system between the European Union and the United States provides a comprehensive search tool for prior art, and is aimed at promoting collaboration among worldwide patent offices, said Lee, who estimated that 45 countries will eventually use the system.

“The process of implementing a new system does require some effort — it requires approximately 20 hours of training per examiner, as well as approximately 120 hours of additional training after the initial training,” she said.

With 8,000 examiners training for the cooperative system, Lee said it has had a temporary impact on the agency’s examination output, and will continue to until January.

“The good news is that we’ll be fully transitioned by January 2015, and the renewed focus on training examiners on examination as well as a continued focus on our hiring will go a long way to help us to continue to bring down the backlog.”

Also contributing to the USPTO’s efforts at becoming more timely is the opening of two additional satellite offices — Detroit in 2012 and Denver, which will open Monday — joining the Dallas and Silicon Valley satellites.

The agency is planning to expand the Patent Trial Appeal Board (PTAB), which has more than doubled to 204 administrative patent judges since the enactment of the America Invents Act (AIA) in September 2011. Lee said the goal is to have 20 appeal board judges in each of the four satellite offices to handle petitions, particularly in inter partes review.

“We have seen a rise in the number of petitions submitted to the PTAB, primarily from the inter partes review proceeding,” Lee said. “So as of last week, the board has received petitions from a cumulative total of 1,351 inter partes reviews, 185 covered business method patent reviews, and six derivation proceedings since the inception of the AIA trial proceedings in September 2012. This fiscal year, petitions received to date represent nearly a 150 percent increase in petition filings over the total number of petitions filed in the entirety of last year. So these filings are up.”

Lee said the office is also working to fulfill three executive initiatives: “encouraging crowdsourcing to better identify prior art and get it before our examiners at the time of the exam,” providing more robust technical training to examiners, and expanding pro bono and pro se programs.

Aside from the backlog in applications and examining patent requests more quickly, one of the big challenges facing the patent office is crafting guidance for the recent Myriad and Mayo cases regarding patent eligibility of natural products and laws of nature.

The office came out with its first relevant guidance on subject matter eligibility claims in March, and is now collecting public comment on changes and iterations. Lee said the initial deadline of June 30 has been extended to July 31.

In addition, two patent officials detailed possible amendments to the guidance and what exactly they would means in their current form.

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